DECISION

 

3M Company v. William Moulin

Claim Number: FA2401002079796

 

PARTIES

Complainant is 3M Company ("Complainant"), represented by Brandon M. Ress of Pirkey Barber PLLC, Texas, USA. Respondent is William Moulin ("Respondent"), France.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <3m-seguridad-industrial.com>, registered with IONOS SE.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Michael A. Albert as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 18, 2024; Forum received payment on January 18, 2024.

 

On January 19, 2024, IONOS SE confirmed by e-mail to Forum that the <3m-seguridad-industrial.com> domain name is registered with IONOS SE and that Respondent is the current registrant of the name. IONOS SE has verified that Respondent is bound by the IONOS SE 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 January 23, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 2024 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-seguridad-industrial.com. Also on January 23, 2024, 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.

 

A timely Response was received and determined to be complete on January 23, 2024.

 

An additional submission was received from Respondent on January 24, 2024.

 

An additional submission was received from Complainant on January 26, 2024.

 

On January 24, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Michael A. Albert as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

3M was founded in the United States in 1902. 3M operates in more than 60 countries. The 3M brand is present in business, healthcare, construction products, beauty care, industrial, transportation, security, personal protective equipment and more.

 

3M owns the marks 3M, 3M & Design, and marks incorporating 3M (collectively, the "3M Mark"). 3M and its licensees have long used the 3M Mark in connection with a wide variety of goods and services. 3M has extensive common law rights in the 3M Mark and also owns a number of trademark registrations for the 3M Marks worldwide, including in Peru. See, e.g., U.S. Reg. Nos. 1,237,168 and 3,398,329; and Peru Reg. No. T00011238. 3M has operated in Peru for many decades and established its subsidiary 3M Peru, S.A. in 1963. The subsidiary has been known as "3M Peru." 

 

The disputed domain name is identical or confusingly similar to Complainant's 3M Mark. Specifically, the domain name 3m-seguridad-industrial.com incorporates the mark 3M in its entirety, tacking on the descriptive terms "-seguridad-industrial," which translate from Spanish (an official language of Peru) as "industrial safety" and do not diminish the similarity between Complainant's mark and the disputed domain name. In fact, the addition of the terms "-seguridad-industrial" is likely to mislead consumers to believe that Respondent's website is distributing Complainant's goods. The presence of a generic top-level domain (".com") is irrelevant in a UDRP 4(a)(i) analysis.

 

Respondent has no rights or legitimate interests in the domain name. Respondent is capitalizing on Complainant's well-known marks to attract internet users, which is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

 

Respondent registered and is using the domain name in bad faith. The Disputed Domain Name is being used for a website that attempts to deceive consumers into thinking that Respondent or Respondent's business is associated with 3M.

 

B. Respondent

Respondent contends that he registered and uses the domain name on behalf of his company CELIM SAC, located in Peru. The company has been legally selling 3M brand products on the Peruvian market for 5 years. The registration and use of the domain name are therefore linked to a bona fide offer of goods or services, in accordance with paragraph 4(c)(i) of the UDRP. The domain name has not been registered or used in bad faith. It enables Peruvian customers to easily access the company's website, which sells 3M products. The use of the domain name is in no way intended to create confusion with 3M Company's official products. It is solely intended to identify the legitimate commercial activity of reselling 3M products.

 

C. Additional Submissions

Respondent, in his additional submission, contends that on all pages of the website, it is noted, "Distribuidor de Equipo profesional 3M en Perú," which translates to "Distributor of Professional Equipment 3M in Peru." Respondent contends that he has clarified his relationship with the 3M brand (i.e., that his company is a distributor of 3M professional equipment in Peru) for visitors to the website. Additionally, Respondent claims that he has modified the website logo to ensure that it does not contain any reference to 3M. The new logo design is intended to eliminate any potential confusion and clearly differentiate the Disputed Domain Name from official 3M platforms.

 

Complainant, in its additional submission notes the following:

·       Respondent's email response does not contain the certification required by Rule 5(c)(viii) that the Response is complete and accurate. Complainant asks that the Panel consider how much weight is appropriate to give Respondent's contentions given the lack of certification and lack of documentary evidence supporting such contentions.

 

·       Respondent does not contest that the disputed domain name is identical or confusingly similar to Complainant's 3M Mark.

 

·       Respondent, who provided an address in France when registering the domain name, alleges that he uses the disputed domain name on behalf of a company in Peru called "ABC" that sells Complainant's products in Peru. Even assuming these bare assertions are true, neither Respondent nor "ABC" is an authorized distributor of Complainant's 3M products.

 

FINDINGS

For the reasons set out below, the Panel finds that Complainant has established the three factors required by the Policy and is entitled to the relief sought.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

Complainant has demonstrated that it owns multiple trademark registrations for the mark 3M. The disputed domain name is confusingly similar to Complainant's well-known 3M Mark because it contains the entirety of Complainant's mark with the addition of "-seguridad-industrial," and a generic gTLD.

 

Where a complainant's mark is clearly identifiable within a disputed domain name, the addition of a descriptive term generally fails to prevent a finding of confusing similarity per Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity."); Netflix, Inc. v. Miguel Nunez, FA 1966875 (Forum Nov. 1, 2021) (finding that using the entirety of the NETFLIX mark with only the addition of the descriptive term "jr" and the ".com" gTLD did not negate confusing similarity).

 

Respondent states that he has modified the website to minimize confusion. That claim is discussed further below; but for purposes of this first element, it suffices to note that the domain name remains the same, and that name (and not the contents of the associated website) is what needs to compared to the 3M Mark. They are confusingly similar. The Panel therefore finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Complainant confirms that it has not authorized Respondent to use its 3M Mark or to register or use the disputed domain name.

 

Further, Respondent is not making a legitimate noncommercial or fair use of the domain name.  Cases decided under the Policy have differed regarding the circumstances in which unauthorized distributors may properly use, as part of a domain name, the mark of a company whose products they sell as part of a domain name. A leading case on this point is Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). Oki Data itself applied to authorized distributors but some panels have extended that principle to unauthorized distributors. Under the Oki Data test, however (even assuming it to be applicable here), one of the requirements is that the disputed domain name not be used to sell products competing with those of the complainant. Here, the record reflects that the disputed domain name is used in connection with the sale not just of 3M-branded products but of other companies' products. Respondent has not sufficiently explained or justified such conduct so as to persuasively establish that he is entitled to the protections of the Oki Data line of cases.

 

The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.

 

Registration and Use in Bad Faith

Respondent is selling goods some of which bear Complainant's brand and some of which do not, at the website to which the Disputed Domain Name resolves. That is evidence of bad faith.

 

By using the disputed domain name for a website displaying the 3M Mark that purports to offer Complainant's goods, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website. Furthermore, through its use of the disputed domain name, Respondent diverts consumers from Complainant's business to Respondent's business and advertises products from third parties.

 

Respondent states that he has modified the website to ensure that it no longer contains any reference to 3M and that the new design is intended to eliminate any potential confusion and clearly differentiate the Disputed Domain Name from official 3M platforms. First of all, however, Respondent provided no evidence to support that statement. The Panel is also mindful of Complainant's observation that Respondent failed to certify that his response is complete or accurate. Even if he had done so, however, this Panel will not adopt a "moving target" approach to resolving disputes under the Policy. If Complainant has established bad faith registration and use, that is all that is required under paragraph 4(a)(iii) of the Policy.  Any alleged remedial action thereafter is not part of the required analysis.   

 

The Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.

 

DECISION

Complainant 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-seguridad-industrial.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Michael A. Albert, Panelist

Dated: February 7, 2024