3M Company v. evit park
Claim Number: FA2012001926367
Complainant is 3M Company (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is evit park (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <distribution3m.com>, registered with Whois Corp.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 28, 2020; the Forum received payment on December 28, 2020. The Complaint was received in both Korean and English.
On January 8, 2021, Whois Corp. confirmed by e-mail to the Forum that the <distribution3m.com> domain name is registered with Whois Corp. and that Respondent is the current registrant of the name. Whois Corp. has verified that Respondent is bound by the Whois Corp. 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 15, 2021, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of February 4, 2021 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@distribution3m.com. Also, on January 15, 2021, the Korean language 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 February 8, 2021, Complainant’s Additional Submission was received in compliance with Supplemental Rule 7.
On February 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Korean, thereby making the language of the proceedings in Korean. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant is a diversified technology company that manufactures a variety of industrial, safety, and consumer products. Complainant has rights in the 3M mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,692,036, registered March 4, 2003). Respondent’s <distribution3m.com> domain name is identical or confusingly similar to Complainant’s 3M mark as it merely adds the term “distribution” and the generic top-level domain “.com.”
Respondent lacks rights or legitimate interests in the <distribution3m.com> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the 3M mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses it to pass off as Complainant and offers to sell Complainant’s products on an unauthorized basis. Furthermore, Respondent uses the disputed domain name to gather personal information.
Respondent registered and uses the <distribution3m.com> domain name in bad faith. Respondent offered to sell Complainant the disputed domain name. Additionally, Respondent uses the disputed domain name to pass off as Complainant and offers to sell Complainant’s products on an unauthorized basis. Finally, Respondent had actual knowledge of Complainant’s rights to the 3M mark prior to registering the disputed domain name based on Respondent’s use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
Complainant’s additional submission recognized that Respondent did not provide any formal answer to the proceedings however, Complainant reemphasized its earlier assertions regarding Respondent’s lack of rights or legitimate interests in the disputed domain name. Complainant also repeated its contention that Respondent registered and uses the disputed domain name in bad faith.
Complainant is 3M Company (“Complainant”), of St. Paul, MN, USA. Complaint is the owner of domestic and international registrations for the mark 3M and related marks, which it has used continuously since at least as early as 2003 in connection with its provision of industrial, safety, and consumer products, including numerous healthcare goods and systems.
Respondent is Evit Park of Seoul, Korea. Respondent’s registrar’s address is listed as Seoul, Korea as well. The Panel notes that the <distribution3m.com> domain name were registered on or about March 3, 2020.
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”).
Complainant asserts rights in the 3M mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,692,036, registered March 4, 2003). Registration of a mark with the USPTO is sufficient to demonstrate 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).”). The Panel here finds Complainant has demonstrated rights in the 3M mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <distribution3m.com> domain name is identical or confusingly similar to Complainant’s 3M mark as it merely adds the term “distribution” and the generic top-level domain “.com.” Adding a generic term and a gTLD to a mark fails to sufficiently distinguish a disputed domain name from a mark per 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.”). The Panel here finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent raises no contentions regarding Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes 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 here finds that Complainant has set forth the requisite prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <distribution3m.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the 3M mark. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Here, the WHOIS information for the disputed domain name lists the registrant as “evit park,” and Complainant argues there is no evidence to indicate that Respondent was authorized to use the 3M mark. The Panel here finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <distribution3m.com> name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to pass off as Complainant and offers to sell Complainant’s products on an unauthorized basis. Passing off as a complainant while offering to sell the complainant’s products on an unauthorized basis may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”); see also Caterpillar Inc. v. Huth, FA 169056 (Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain name because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”). Here, Complainant argues that Respondent’s website prominently and repeatedly displays the 3M Mark, as well as images of Complainant’s products while purporting to sell Complainant’s marks. Complainant further highlights that Respondent’s website even displays an identical, unauthorized copy of one of Complainant’s brochures with information about the Personal Protective Equipment it offers. The Panel here finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues that Respondent fails to use the <distribution3m.com> name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to gather personal information. Using a confusingly similar domain name in connection with a phishing scheme may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either 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).”). Here, Complainant argues that Respondent is attempting to gather Internet users’ personal information through its “Order Application Form” – Respondent requests information from consumers, such as their name, phone number, email address. The Panel here finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions regarding Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant contends Respondent registered and uses the <distribution3m.com> domain name in bad faith as Respondent offered to sell Complainant the disputed domain name. A respondent’s offer to sell the disputed domain name can evidence bad faith registration and use per Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). Here, Complainant argues that Complainant’s brand protection service reached out to Respondent to inform Respondent of 3M’s intellectual property rights and to request that Respondent disable the domain. In response to Complainant’s request, Respondent stated that 3M would need to pay for them for the disputed domain name. The Panel here finds the Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Complainant also contends Respondent registered and uses the <distribution3m.com> domain name in bad faith because Respondent uses the disputed domain name to pass off as Complainant and offer to sell Complainant’s products on unauthorized basis. Passing off as a complainant while offering to sell the complainant’s products on an unauthorized basis can evidence bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Here, the Panel may recall Complainant provides screenshots of Respondent’s resolving webpage, which Complainant argues prominently and repeatedly displays the 3M Mark, as well as images of Complainant’s products while purporting to sell Complainant’s marks. The Panel here finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Next, Complainant contends Respondent registered the <distribution3m.com> domain name with actual knowledge of Complainant’s rights in the 3M mark based on Respondent’s use of the 3M mark. Use of a mark to divert Internet traffic to a disputed domain name can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith per Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant argues that Respondent’s actual knowledge is evidenced by Respondent’s use of a domain name incorporating Complainant’s mark for a website featuring the 3M mark, unauthorized copies of Complainant’s product brochures, and images and videos of Complainant’s products. The Panel here finds Respondent actually knew of Complainant’s mark and registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant argues Respondent registered and uses the <distribution3m.com> domain name in bad faith because Respondent uses the disputed domain name to gather personal information. Using a confusingly similar domain name to phish for personal information can evidence bad faith registration and use per Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, the Panel again notes that Complainant provides screenshots of Respondent’s “Order Application Form,” which Complainant argues proves Respondent is attempting to gather Internet users’ personal information such as their name, phone number, email address. The Panel here finds that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Respondent raises no contentions regarding Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the applicable ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <distribution3m.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 26, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page