3M Company v. Robert Fossa et al.
Claim Number: FA2005001894595
Complainant: 3M Company of St. Paul, Minnesota, United States of America.
Complainant Representative: Pirkey Barber PLLC of Austin, Texas, United States of America.
Respondent: Robert Fossa of San Antonio, Texas, US.
3m.sale of Anaheim, California, United States of America.
REDACTED FOR PRIVACY of REDACTED FOR PRIVACY, Texas, United States of America.
REGISTRIES and REGISTRARS
Registries: Dog Beach, LLC
Registrars: Dreamscape Networks International Pte Ltd
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Examiner in this proceeding.
Antonina Pakharenko-Anderson, as Examiner.
Complainant submitted: May 1, 2020
Commencement: May 5, 2020
Response Date: May 14, 2020
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Multiple Respondents: Robert Fossa of San Antonio, Texas, US; 3m.sale of Anaheim, California, United States of America; REDACTED FOR PRIVACY of REDACTED FOR PRIVACY, Texas, United States of America.
Findings of Fact:
Complainant is a global corporation headquartered in Minnesota. It has strong rights in its famous mark 3M for healthcare products (US trademark registrations Nos. 2692036 (Nice Classes 01, 03, 05, 09, 10, 28), 3398329 (Nice Classes 09, 10); Mexico trademark registrations Nos. 723899 (Nice Class 10), 803678 (Nice Class 44), 1584987 (Nice Class 09), 1514280 (Nice Class 10).
Complainant contends it is one of the largest suppliers of protective respirator masks, as it is clearly visible from evidence, provided by the Complainant.
The disputed domain name <3m.sale> was registered on March 26, 2020.
The Respondents are Robert Fossa of San Antonio, Texas, US; 3m.sale of Anaheim, California, United States of America; REDACTED FOR PRIVACY of REDACTED FOR PRIVACY, Texas, United States of America.
The Response was received on May 14, 2020, and its content is as follows.
[URS 18.104.22.168] Response: “Our Domain Name: <3m.sale> We paid for it from a legitimate company and no one owns it before we paid for it”.
[URS 22.214.171.124] Response: “This Domain Name (s): <3m.sale> is legitimately registered”.
[URS 126.96.36.199] – no response followed.
To sum up the above mentioned, it is obvious that, although the response was timely received, it does not contain the required data (URS Procedure 5.4) – neither sufficient facts nor relevant legal arguments, admission/denial, etc.
Regardless the above, URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
Identical or confusingly similar (URS 188.8.131.52.)
The Examiner finds that the domain name <3m.sale> fully incorporates the Complainant’s 3M marks at the second level. “Sale” is a descriptive/generic term highly associated with 3M. In context, the registrant’s use of @3m.sale email addresses clearly associates the domain with 3M.
The Examiner finds that the domain name <3m.sale> is identical to the Complainant’s 3M marks under URS 184.108.40.206.
No rights or legitimate interests (URS 220.127.116.11.)
The domain subsumes 3M’s distinctive mark, and 3M did not authorize its registration. See Deutsche Lufthansa AG v.PrivacyDotLink 3455350, Case No. FA1712001762821 (Forum 2018) (in action by owner of EUTM LUFTHANSA mark against domain lufthansa.earth, “[i]t is most improbable that Respondent has any rights or legitimate interest in the disputed domain name as it is identical to Complainant’s distinctive trademark”); Burberry Limited v. Domains By Proxy, LLC, Case No. FA1609001694006 (Forum 2016) (lack of legitimate rights found where “Complainant has not granted any license or consent, express or implied, to use the BURBERRY Marks in a domain name”).
The Examiner finds that the Respondent has not established any rights or legitimate interests in the domain name <3m.sale> under URS 18.104.22.168.
Bad faith registration and use (URS 22.214.171.124.)
The domain name <3M.sale> was registered on March 26, 2020, long time after the Complainants trademarks were registered. Thus, it may be stated that the Respondent was on constructive notice of the Complainant's registered trademarks which may serve as the evidence of the bad faith.
Also, the fact that the Respondents registered the disputed domain name in the height of the Covid-19 pandemic panic may serve the evidence of bad faith registration and use (i.e., the Respondents have intentionally attempted to attract for commercial gain).
The Complainant also states (by demonstrating relevant evidence) that email addresses connected to the disputed domain are being used in connection with fraudulent offers. See Burberry Limited, Case No. FA1609001694006 (bad faith found where respondent used email address to send offers “for likely counterfeit goods, as he has no access” to genuine goods); see also Deutsche Lufthansa, Case No. FA1712001762821 (bad faith found because respondent had “no plausible reasons for choosing and using [a] unique nongeneric
name and trademark as a domain name” and it was “impossible to imagine how Respondent might use the disputed domain name for any reason other than to pretend that it relates to an official LUFTHANSA website or email address”).
The Examiner finds such behavior to evidence Respondent’s bad faith registration and use under URS 126.96.36.199.
The Examiner finds that the complaint was neither abusive nor contained material falsehoods.
After reviewing the parties’ submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
Antonina Pakharenko-Anderson, Examiner
Dated: May 18, 2020
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