3M Company v. Nguyen manh Song / manh Song
Claim Number: FA2006001899349
Complainant is 3M Company (“Complainant”), represented by Giulio E. Yaquinto of Pirkey Barber PLLC, United States. Respondent is Nguyen manh Song / manh Song (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <3mmaskexport.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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 June 8, 2020; the Forum received payment on June 8, 2020. The Complaint was submitted in both Japanese and English.
On June 8, 2020, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <3mmaskexport.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 June 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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@3mmaskexport.com. Also on June 16, 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 July 13, 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.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings in Japanese.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant made the following contentions
Complainant, 3M Company, is a technology company that manufactures a variety of industrial, safety, and consumer products. Complainant has rights in the 3M mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,398,329, registered Mar. 18, 2008). See Compl. Ex. C. Respondent’s <3mmaskexport.com> domain name is confusingly similar to Complainant’s 3M mark because it wholly incorporates the mark, simply adding the terms “mask” and “export.”
Respondent does not have rights or legitimate interests in the <3mmaskexport.com> domain name. Respondent is not authorized to use Complainant’s 3M mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent purports to sell healthcare items in demand during the corona virus pandemic and in connection with Complainant’s mark.
Respondent registered and uses the <3mmaskexport.com> domain name in bad faith. Respondent uses the disputed domain name to offer competing products for sale. Additionally, Respondent’s registration of the domain name at the height of a pandemic scare suggests opportunistic bad faith. Finally, Respondent had knowledge of Complainant’s rights in the 3M mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States technology company that manufactures a variety of industrial, safety, and consumer products.
2. Complainant has established its trademark rights in the 3M mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,398,329, registered Mar. 18, 2008).
3. Respondent registered the <3mmaskexport.com> domain name on March 21, 2020.
4. Respondent uses the domain name to purport to sell masks, sanitizer, corona virus testing kits, thermometers and other healthcare items in connection with Complainant’s trademark and, as this is being done during the COVID-19 pandemic when masks are in great demand, this conduct is clearly opportunistic, negates any possibility of a right or legitimate interest by Respondent in the domain name and shows that it has been registered and used in bad faith.
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 WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy 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 rights in the 3M mark based upon its registration with the USPTO. Registration of a mark with the USPTO is generally sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration of the 3M mark with the USPTO (e.g., Reg. No. 3,398,329, registered Mar. 18, 2008). See Compl. Ex. C. Thus, the Panel finds that Complainant has rights in the 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 3M mark. Complainant argues that Respondent’s <3mmaskexport.com> domain name is confusingly similar to Complainant’s 3M mark because it wholly incorporates the mark, simply adding the terms “mask” and “export.” The disputed domain name also adds the “.com” generic top-level domain (“gTLD”). Addition of generic or descriptive terms and a gTLD may not negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Thus, the Panel finds that the disputed domain name is identical or confusingly similar to the 3M 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”).
(a) Respondent has chosen to take Complainant’s 3M trademark and to use it in its domain name, adding the words “mask” and “export” which do not negate the confusing similarity between the domain name and the trademark but emphasize it, in view of the great public interest in masks during the COVID-19 pandemic;
(b) Respondent registered the <3mmaskexport.com> domain name on March 21, 2020;
(c) Respondent uses the domain name to purport to sell masks, sanitizer, corona virus testing kits, thermometers and other healthcare items in connection with Complainant’s mark;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <3mmaskexport.com> domain name since Respondent is not authorized to use Complainant’s 3M mark and is not commonly known by the disputed domain name. When no response is submitted, 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 constitutes 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 lists “Nguyen Manh Song” as the registrant of the domain name and no information suggests that Complainant has authorized Respondent to use the 3M mark in any way. See Compl. Ex. E. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii)
(f) Complainant also argues that Respondent does not use the <3mmaskexport.com> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use, but instead purports to sell masks, sanitizer, corona virus testing kits, thermometers and other healthcare items in connection with Complainant’s trademark. Use of a disputed domain name to offer products that compete with a complainant’s business is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant 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).”). Complainant claims that Respondent’s use of the 3M mark in connection with the sale of masks is likely to cause consumers to believe mistakenly there is some connection between Respondent and Complainant. Complainant provides a screenshot of Respondent’s website. See Compl. Ex. D. Thus, the Panel agrees with Complainant and finds that Respondent is not using the domain name for 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).
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 has no rights or legitimate interests 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 submits that Respondent registered and uses the <3mmaskexport.com> domain name in bad faith since Respondent uses the disputed domain name to offer competing products for sale. Use of a disputed domain name to offer products or services that compete with a complainant’s business supports a finding of bad faith registration and use under Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). As previously mentioned, Complainant provides a screenshot of Respondent’s website and contends that the health products offered by Respondent are similar to those offered by Complainant. See Compl. Ex. D. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent’s registration of the <3mmaskexport.com> domain name at the height of a pandemic scare suggests opportunistic bad faith. Opportunistic bad faith may be shown by a respondent’s registration of a domain name in tandem with a major change in a complainant’s name or operations per Policy ¶ 4(a)(iii). See Atlantic Automotive Corp. v. michelle popp, FA 1787763 (Forum June 26, 2018) (“The Panel is of the view that the registration of a domain name in temporal proximity to a merger or acquisition involving Complainant and its associated marks supports a finding of bad faith.”). Complainant claims that Respondent is capitalizing on the connection between Complainant’s products and the pandemic scare to promote the sale of masks, sanitizer, corona virus testing kits, thermometers and other healthcare items masks and other health care items. As the Panel agrees that this use qualifies as opportunistic bad faith, the Panel may find bad faith registration and use under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent had knowledge of Complainant’s rights in the 3M mark. Actual knowledge of a complainant’s rights in a mark evidences bad faith under Policy ¶ 4(a)(iii), and may be shown by a respondent’s use of the mark and other logos or information in conjunction with the disputed domain name. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Complainant submits that Respondent must have been aware of Complainant’s mark and business since Respondent uses a counterfeit duplication of Complainant’s historical logo in connection with the disputed domain. As the Panel agrees that actual knowledge is present, it finds bad faith registration and use under Policy ¶ 4(a)(iii).
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 <3mmaskexport.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 14, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page