3M Company v. Shahram Zarif Pour
Claim Number: FA2004001890670
Complainant is 3M Company (“Complainant”), represented by Stephanie A. Schmidt of Norton Rose Fulbright US LLP, Texas, United States. Respondent is Shahram Zarif Pour (“Respondent”), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <littmannco.com>, registered with 1API GmbH.
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 April 1, 2020; the Forum received payment on April 1, 2020.
On April 3, 2020, 1API GmbH confirmed by e-mail to the Forum that the <littmannco.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 6, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 2020 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@littmannco.com. Also on April 6, 2020, 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 April 30, 2020, 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.
A. Complainant
Complainant made the following contentions.
Complainant, 3M Company, is the owner of the LITTMANN trademark and for over half a century has offered stethoscopes under the LITTMANN mark. These stethoscopes, advertised at www.littmann.com and elsewhere, are among Complainant’s most successful products and is well-known in the medical field. Complainant has rights in the LITTMANN mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 751,809, registered June 25, 1963). See Compl. Annex C. Respondent’s <littmannco.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s LITTMANN mark, only adding the generic term “co” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <littmannco.com> domain name. Respondent is not licensed or authorized to use Complainant’s LITTMANN mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain to pass off as Complainant and redirect users who are seeking Complainant’s products to a website that has no affiliation with Complainant.
Respondent registered and uses the <littmannco.com> domain name in bad faith. Respondent attempts to attract Internet users to Respondent’s website by deceiving Internet users as to Respondent’s affiliation with the Complainant for commercial gain. Respondent also had actual knowledge or Complainant’s rights in the LITTMANN mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company which, among its other activities, offers well known stethoscopes under the LITTMAN mark.
2. Complainant has established its trademark rights in the LITTMANN mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 751,809, registered June 25, 1963).
3. Respondent registered the <littmannco.com> domain name on August 5, 2019.
4. Respondent uses the disputed domain to pass itself off as Complainant and redirect users who are seeking Complainant’s products to a website that has no affiliation with Complainant.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See Galaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss 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 trademark rights in the LITTMANN mark based upon its registration of the mark with the USPTO (e.g. Reg. No. 751,809, registered June 25, 1962). See Compl. Annex C. Registration of a mark with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i)”). Therefore, the Panel finds that Complainant has rights in the LITTMANN 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 LITTMANN mark Complainant argues that Respondent’s <littmannco.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s LITTMANN mark, merely adding the generic term “co” to the mark and the “.com” gTLD. The addition of a generic word and a gTLD to a mark may not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). Thus, the Panel finds that the Respondent’s <littmannco.com> domain name is confusingly similar to the LITTMANN mark 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 LITTMANN mark and to use it in its domain name adding the generic term “co” to the mark;
(b) Respondent registered the <littmannco.com> domain name on August 5, 2019;
(c) Respondent uses the disputed domain to pass itself off as Complainant and redirect users who are seeking Complainant’s products to a website that has no affiliation with Complainant;
(d) Respondent uses the domain name to divert Internet users to its website which offers services that compete with Complainant, attempts to pass itself off as Complainant and operates a website associated with malware or phishing;
(e) Respondent has engaged in these activities without the consent or approval of Complainant;
(f) Complainant argues that Respondent does not have rights or legitimate interests in the <littmannco.com> domain name because Respondent is not authorized to use Complainant’s LITTMANN mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names”). Additionally, lack of authorization to use a mark can constitute a further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record notes “1API GmbH” as the registrant and no information in the record suggests that Complainant has authorized Respondent to use the LITTMANN mark in any way. See Compl. Annex B. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(g) Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to mislead consumers and direct them to the website they may believe is affiliated with Complainant. Use of a disputed domain name to divert Internet users to a respondent’s site and confusing them into believing that some sort of affiliation with a complainant exists may not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”). Here, Complainant has provided screenshots of Respondent’s webpage purporting that consumers are presented with Complainant’s 3M and LITTMANN logos and the phrase “LITTMANN STETHOSCOPES ONLINE STORE.” See Compl. Annex D. Thus, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(iii).
(h) Complainant argues that Respondent is attempting to pass itself off as Complainant in an attempt to sell Complainant’s products. Use of a disputed domain name by a respondent to attempt to pass itself off as the complainant is not a bona fide offering of goods or services per Policy ¶¶ 4(c)(i) and (iii). See Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”). Here, Respondent features Complainant’s logos and product images with price figures on its website and purports to sell LITTMANN products and related services. See Compl. Annex D. As the Panel agrees, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services per Policy ¶¶ 4(c)(i) or (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 does not have a right or legitimate interest 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 has registered and uses the <littmannco.com> domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name falsely to indicate an association with a complainant. See AOL LLC v. iTech Ent , LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, Complainant submits that Respondent created a likelihood of confusion with Complainant and its trademarks by registering a domain name that incorporates in its entirety Complainant’s LITTMANN mark and gives the impression that interested individuals will receive information or products on behalf of Complainant. Thus, the Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent had actual or constructive knowledge of Complainant’s rights in the LITTMANN mark when registering the disputed domain name and this shows bad faith. Actual knowledge or a complainant’s rights in a mark at the time of registration can be shown to be bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it”). Actual knowledge of a mark can be established by showing the fame and notoriety of the mark. See Snap Inc. v. Deepika Priyadars hinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product). Complainant argues that in light of: (1) Complainant’s federal registration of its LITTMANN mark; (2) the fame of the LITTMANN mark; (3) Complainant’s long-standing use of the LITMANN mark; (4) the confusing similarity between the disputed domain name and Complainant’s mark; and (5) the fact that Respondent uses the domain name to post products, product images, and logos that are identical to Complainant’s own products, Respondent undoubtedly knew of Complainant’s rights in the LITTMANN mark prior to registering the disputed domain name. As the Panel agrees, it finds bad faith registration and use under Policy ¶ 4(a)(iii).
Thirdly, 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 LITTMANN mark and in view of the conduct that Respondent has engaged in when using the 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 <littmannco.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 30, 2020
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