3M Company v. Above.com Domain Privacy
Claim Number: FA1604001668805
Complainant is 3M Company (“Complainant”), represented by Elizabeth Stafki, Texas, United States. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scotchbrandtape.com>, registered with Above.Com Pty 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 4, 2016; the Forum received payment on April 4, 2016.
On April 7, 2016, Above.Com Pty Ltd. confirmed by e-mail to the Forum that the <scotchbrandtape.com> domain name is registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the name. Above.Com Pty Ltd. has verified that Respondent is bound by the Above.Com Pty 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 April 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 2016 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 firstname.lastname@example.org. Also on April 8, 2016, 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 May 2, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
Complainant contends as follows:
Complainant uses the SCOTCH mark in connection with its tape and other office supply products. Complainant has registered the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 503,709, registered November 9, 1948) and elsewhere, which demonstrates rights in the mark.
Respondent’s <scotchbrandtape.com> domain name is confusingly similar to Complainant’s mark because it incorporates the SCOTCH mark in its entirety and adds only the generic words “brand” and “tape,” as well as the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <scotchbrandtape.com> domain name. First, Respondent is not commonly known by the disputed domain name. Further, Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <scotchbrandtape.com> domain name. Rather, Respondent’s use of the <scotchbrandtape.com> domain name in March 2016 was to park the domain name in order to allow the display of hyperlinks with titles related to Complainant’s business, such as “3 M Masking Tape” and “Double Sided 3M Tape.” Respondent’s current use of the <scotchbrandtape.com> domain name constitutes a phishing scheme. The disputed domain name redirects Internet users to a website displaying the error message: “A serious malfunction has been detected,” which advises users to “call the toll-free number below for a Microsoft-certified technician” and provided a telephone number.
Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Further, Respondent’s current use of the disputed domain name to show users an error message and prompt users to call a telephone number the message claims to be a Microsoft support line number constitutes phishing, which is evidence of bad faith registration and use. Lastly, Respondent has engaged a privacy service while displaying commercial content, evincing bad faith per Policy ¶ 4(a)(iii).
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the SCOTCH mark through its registration of such mark with the USPTO and through its other registrations worldwide.
Respondent is not affiliated with Complainant and has not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademark.
Respondent used the at-issue domain name to park the domain name in order to display hyperlinks related to Complainant’s business. Respondent’s current use of the <scotchbrandtape.com> domain name constitutes a phishing scheme.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its SCOTCH mark with the USPTO and elsewhere worldwide establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Capital One Financial Corp. v. Paydayloanz.com, FA1463493 (Forum October 22, 2012) (concluding that Complainant has “secured rights in its CAPITAL ONE mark through its various global trademark registrations.”).
The at-issue domain name starts with Complainant’s SCOTCH trademark, adds the generic terms “brand” and “tape,” terms which are suggestive of Complainant’s use of the mark in commerce, and ends with the generic top-level domain name “.com”. The differences between Respondent’s domain name and Complainant’s SCOTCH trademark are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that the <scotchbrandtape.com> domain name is confusingly similar to Complainant’s SCOTCH mark under Policy ¶ 4(a)(i). See, e.g., Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
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.
WHOIS information for the at-issue domain name lists “Above.com Domain Privacy” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <scotchbrandtape.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <scotchbrandtape.com> domain name was parked to display hyperlinks with titles related to Complainant’s business, such as “3 M Masking Tape” and “Double Sided 3M Tape.” The domain name was more recently used in support of a phishing scheme where internet visitors are directed to a website displaying a putative error message stating that “[a] serious malfunction has been detected,” and advising the website’s visitor to “call the toll-free number below for a Microsoft-certified technician” via the provided telephone number. Using the confusingly similar domain name in this manner 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). See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also, Juno Online Servs., Inc. v. Iza, FA 245960 (Forum May 3, 2004) (defining “phishing” as “the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit card numbers, passwords, social security numbers and other personal information that may be used for fraudulent purposes”); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. Circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and interests, Respondent used the domain name to direct visitors to an array of competitors and unrelated third parties via the hyperlinks displayed on its <scotchbrandtape.com> website. The links are presumably configured to remunerate Respondent on a pay-per-click basis. Using the confusingly similar domain name in this manner demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Additionally and as also mentioned above regarding rights and interests, Respondent uses the at-issue domain name to facilitate a phishing scheme. Respondent’s phishing scheme is yet more compelling evidence of Respondent’s bad faith registration and use of its <scotchbrandtape.com> domain name. See Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <scotchbrandtape.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 4, 2016
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