3M Company v. XianYun Zeng / ZengXianYun
Claim Number: FA1108001405103
Complainant is 3M Company (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is XianYun Zeng / ZengXianYun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <3mprivacyfilter.us>, 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 26, 2011; the Forum received a hard copy of the Complaint August 29, 2011.
On August 30, 2011, Name.com confirmed by e-mail to the National Arbitration Forum that the <3mprivacyfilter.us> domain name 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 the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 6, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”) setting a deadline of September 26, 2011, by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 30, 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 Forum discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <3mprivacyfilter.us>, is confusingly similar to Complainant’s 3M mark.
2. Respondent has no rights to or legitimate interests in the <3mprivacyfilter.us> domain name.
3. Respondent registered and used the <3mprivacyfilter.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, 3M Company, began operation in 1906 under its 3M mark and currently offers more than 50,000 products and services in a diverse variety of fields, including accessories for computers and related electronics. Complainant holds multiple trademark registrations with China’s State Administration for Industry and Commerce (“SAIC”), including Reg. No. 138,324, registered July 5, 1980 and registration with the United States Patent and Trademark Office (“USPTO”), including Reg. No. 1,275,187, registered April 24, 1984).
Respondent, XianYun Zeng / ZengXianYun, registered the <3mprivacyfilter.us> domain name August 5, 2010. The disputed domain name resolves to a pay-per-click website hosting hyperlinks to third parties that offer products in competition with Complainant’s products.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant provides evidence of its trademark registrations for its 3M mark with the SAIC (e.g., Reg. No. 138,324 registered July 5, 1980) and the USPTO (e.g., Reg. No. 1,275,187 registered April 24, 1984). Based on these national trademark registrations, the Panel finds that Complainant owns Policy ¶ 4(a)(i) rights in its 3M mark. See Check Into Cash, Inc. v. Questar, FA 1024235 (Nat. Arb. Forum Aug. 13, 2007) (“Complainant has established rights in the CHECK INTO CASH mark through registration with the USPTO.”); see also Reliant Techs., Inc. v. Jones, FA 1124524 (Nat. Arb. Forum Feb. 19, 2008) (finding that, as the complainant had registered its FRAXEL mark with the USPTO, the complainant had established rights to the mark pursuant to Policy ¶ 4(a)(i)).
Complainant notes that the <3mprivacyfilter.us> domain name contains Complainant’s entire 3M mark and includes the descriptive terms “privacy” and “filter” along with the country-code top-level domain (“ccTLD”) “.us.” The Panel finds that additions of descriptive terms and a ccTLD fail to adequately distinguish the disputed domain name from Complainant’s mark. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (finding the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark because the presence of a top-level domain like “.us” is “inconsequential to a Policy ¶ 4(a)(i) analysis”).
The Panel finds that Respondent’s <3mprivacyfilter.us> domain name is confusingly similar to Complainant’s 3M mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleged that Respondent has no rights to or legitimate interests in the <3mprivacyfilter.us> domain name. When the Complainant makes a prima facie case to support its allegations, the burden of proof shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) See Ulster Bank Ltd. v. Rainer, FA 1154854 (Nat. Arb. Forum Apr. 17, 2008) (holding that, once the complainant established a prima facie case against the respondent, the burden of proof shifted from complainant to respondent). The Panel finds Complainant made a prima facie case. Given Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent has no rights or legitimate interests in the disputed domain name. See Wells Fargo & Co. v. Trust Advocates, Inc., FA 1117262 (Nat. Arb. Forum Jan. 17, 2008) (“Respondent’s failure to respond to the Complaint allows the Panel to conclude that Respondent lacks rights and legitimate interests in the disputed domain name.”). Yet, before making a determination, the Panel still examines the record to determine whether evidence there suggests that Respondent has such rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
No evidence in the record suggests that Respondent owns any service marks or trademarks that reflect a right to use the <3mprivacyfilter.us> domain name. Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to a Policy ¶ 4(c)(i) analysis. See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant claims that Respondent is not commonly known by the <3mprivacyfilter.us> domain name and that Respondent does not operate a business or other organization under the disputed domain name. The WHOIS information identifies the registrant of the <3mprivacyfilter.us> domain name as “XianYun Zeng / ZengXianYun.” Respondent presented no evidence that it is commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the <3mprivacyfilter.us> domain name under a Policy ¶ 4(c)(iii) evaluation. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under UDRP ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <3mprivacyfilter.us> domain name resolves to a website that features hyperlinks to third parties selling products that compete with Complainant’s wide array of products. For instance, the resolving website contains hyperlinks to “Anti Glare Coatings/Films,” “Magic Mesh” Door Screen, “Separator Screens,” and “cardboard adjustable table/desktop carrels.” Complainant claims, and the Panel is permitted to presume under such circumstances, that Respondent receives click-through fees from these hyperlinks. The Panel determines that Respondent is making neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use of the <3mprivacyfilter.us> domain name pursuant to Policy ¶ 4(c)(iv). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii)); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANNPolicy ¶ 4(a)(ii).
Complainant alleges that Respondent also registered the <3m-privacyfilter.com>, <3mprivacyfilter.org>, <3mprivacyfilter.asia>, and <3mprivacyfilter.biz> domain names in addition to the <3mprivacyfilter.us> domain name. However, as these domain names are not included in this case, the Panel chooses not to find bad faith registration or use under Policy ¶ 4(b)(ii) as to the group of domain names.
Although Complainant does not argue bad faith registration or use under Policy ¶ 4(b)(iii), since the <3mprivacyfilter.us> domain name resolves to a website containing hyperlinks to third-parties that sell competing products, the Panel finds that Respondent registered and is using the disputed <3mprivacyfilter.us> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under UDRP ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant urges that Respondent is attempting to attract Internet users to its website for commercial gain by creating confusion as to Complainant’s affiliation with the <3mprivacyfilter.us> domain name. The Panel finds that Respondent’s receipt of pay-per-click fees from the hyperlinks resolving from the confusingly similar disputed domain name is sufficient evidence to support findings that Respondent registered and uses the <3mprivacyfilter.us> domain name in bad faith under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under UDRP ¶ 4(b)(iv)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under UDRP ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
The Panel finds that Respondent registered and used the disputed domain name 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.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 11, 2011.
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