3M Company v. YunYao Technology Co., Ltd / XianYun Zeng / Xiankai Zeng
Claim Number: FA1108001403241
Complainant is 3M Company (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is YunYao Technology Co., Ltd / XianYun Zeng / Xiankai Zeng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <3mprivacyfilter.biz>, registered with Fast Domain Inc., and <3mprivacyfilter.asia>, registered with Name.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 15, 2011; the National Arbitration Forum received payment August 16, 2011.
On August 15, 2011 Name.com confirmed by e-mail to the National Arbitration Forum that <3mprivacyfilter.asia> is registered with Name.com and that Respondent is the current registrant of the name. Name.com verified that Respondent is bound by the Name.com registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (“the Policy”).
On August 16, 2011, Fast Domain Inc. confirmed by e-mail to the National Arbitration Forum that the <3mprivacyfilter.biz> domain name is registered with Fast Domain Inc. and that Respondent is the current registrant of the name. Fast Domain Inc. verified that Respondent is bound by the Fast Domain Inc., registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 2011, 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@3mprivacyfilter.biz and postmaster@3mprivacyfilter.asia. Also on August 23, 2011, Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 20, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 National Arbitration 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.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <3mprivacyfilter.biz> and <3mprivacyfilter.asia>, are confusingly similar to Complainant’s 3M mark.
2. Respondent has no rights to or legitimate interests in the <3mprivacyfilter.biz> and <3mprivacyfilter.asia> domain names.
3. Respondent registered and used the <3mprivacyfilter.biz> and <3mprivacyfilter.asia> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, 3M Company, has used the 3M mark in connection with numerous products. Complainant has operations in some 60 countries and sells its products in some 200 countries. Complainant has multiple trademark registrations for the 3M mark with the Chinese State Administration for Industry and Commerce (“SAIC”), the United States Patent and Trademark Office (“USPTO”), and the Canadian Intellectual Property Office (“CIPO”), among other trademark offices worldwide such as the following registrations:
SAIC
Reg. No. 138324 registered July 5, 1980;
Reg. No. 6564211 registered March 14, 2011;
USPTO
Reg. No. 1,275,187 registered April 24, 1984;
Reg. No. 2,061,566 registered May 13, 1997;
Reg. No. 2,063,090 registered May 20, 1997;
Reg. No. 2,291,115 registered November 9, 1999; &
CIPO
Reg. No. 381,123 registered March 8, 1991.
Respondent, YunYao Technology Co., Ltd / XianYun Zeng / Xiankai Zeng, registered the <3mprivacyfilter.biz> domain name June 19, 2011 and the <3mprivacyfilter.asia> domain name August 5, 2010. Respondent’s disputed domain names resolve to a commercial website selling competing products that are not Complainant’s.
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."
Given 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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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 (Nat. Arb. 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Preliminary Issue: Multiple Respondents
In the instant proceeding, Complainant alleged that the entities that control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “a complainant may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus the Panel chooses to proceed with the instant proceeding.
Complainant has multiple trademark registrations for the 3M mark with the SAIC, the USPTO, and CIPO, including the following registrations:
SAIC
Reg. No. 138324 registered July 5, 1980;
Reg. No. 6564211 registered March 14, 2011;
USPTO
Reg. No. 1,275,187 registered April 24, 1984;
Reg. No. 2,061,566 registered May 13, 1997;
Reg. No. 2,063,090 registered May 20, 1997;
Reg. No. 2,291,115 registered November 9, 1999; &
CIPO
Reg. No. 381,123 registered March 8, 1991.
Registration with multiple trademark agencies, including the USPTO and the SAIC, is sufficient to prove rights in a claimed mark. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005), and Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010). Although it need not be registered in Respondent’s country of residency, Complainant’s trademark registration in Respondent’s country and the U.S., as well as many other countries, is sufficient to show Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s disputed domain names are confusingly similar to Complainant’s protected 3M mark. Both disputed domain names contain Complainant’s mark combined with the generic terms “privacy” and “filter;” and either the sponsored top-level domain (“sTLD”) “.asia” or the generic top-level domain (“gTLD”) “.biz.” Combining a complainant’s mark with a generic term does not distinguish a disputed domain name from a finding of confusing similarity to the mark. Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), and Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) It is also established precedent that neither gTLDs like “.biz” nor sTLDs like “.asia” distinguish domain names from a complainant’s mark. See Mattel, Inc. v. Cuthbert, FA 1214706 (Nat. Arb. Forum Aug. 26, 2008) (concluding that the addition of the gTLD “.biz” did not sufficiently distinguish the disputed domain name); see also AutoZone Parts, Inc. v. DomainBonus.com, FA 1229026 (Nat. Arb. Forum Dec. 1, 2008) (finding that the addition of the sTLD “.asia” is irrelevant in determining whether the disputed domain name is identical or confusingly similar to a mark).
Accordingly, the Panel holds that Respondent’s disputed domain names are confusingly similar to Complainant’s 3M mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must present a prima facie case against Respondent under Policy ¶ 4(a)(ii) and then the burden to demonstrate rights and legitimate interests shifts to Respondent. Complainant satisfied its obligation but Respondent has not met its burden because it has defaulted. The Panel may take Respondent’s default as evidence of a lack of rights and legitimate interests and may make the inference that Respondent chose not to contest Complainant’s allegations. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). Nevertheless, this Panel elects to consider the evidence under the Policy ¶ 4(c) factors in order to determine whether the evidence suggests that Respondent has rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent is not commonly known by the name “3M” and does not operate any business or other entity under the name “3M.” Complainant asserts that Respondent has no connection with Complainant and does not have Complainant’s consent to use the 3M mark in a domain name. The WHOIS information for the disputed domain names lists the registrant as “YunYao Technology Co., Ltd / XianYun Zeng / Xiankai Zeng,” which the Panel finds does not reflect any nominal association between Respondent and the disputed domain names. Based on these facts, the Panel finds that Respondent is not commonly known by the disputed domain names and consequently does not possess rights and legitimate interests under a Policy ¶ 4(c)(ii) analysis. See Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant contends that Respondent uses the disputed domain names to host commercial websites selling products not made by Complainant but similar to products sold by Complainant, such as privacy filters and laptop stands. Complainant alleges that these competing sales under the 3M mark do not conform to a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and they are not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel agrees with Complainant. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), and Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (commercial websites selling another company’s products under a complainant’s mark did not satisfy Policy ¶¶ 4(c)(i) and (iii)).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant does not make any argument concerning Policy ¶ 4(b)(iii). Complainant asserts, however, that Respondent sells products, such as privacy filters and laptop stands, at the disputed domain names and that these products are not manufactured by Complainant but compete with Complainant’s products. The Panel holds that offering these similar products from another company under Complainant’s mark creates competition with Complainant and disrupts Complainant’s business, and constitutes evidence supporting a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Complainant contends that Respondent uses the 3M mark in the disputed domain names and offers for sell products that Complainant also sells to attract Internet users to Respondent’s commercial website and to create an erroneous impression that Complainant somehow sponsors or is affiliated with the disputed domain names. Complainant urges that Respondent intentionally creates this impression to increase sales of the products on the resolving website and to generate profit for Respondent. Complainant alleges that these activities, as well as the fact that some of the products advertised on the website purport to be Complainant’s products although they are actually counterfeit versions, indicate that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). The Panel agrees with Complainant. See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶ 4(b)(iv).”).)
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <3mprivacyfilter.biz> and <3mprivacyfilter.asia> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 28, 2011.
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