3M Company v. Touch Screens Inc.
Claim Number: FA1110001411138
Complainant is 3M Company (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Touch Screens Inc. (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <3mmicrotouch.mobi>, <3mtouch.mobi>, <3mtoch.com>, <3mtuch.com>, <3mtouchscreen.com>, <3mtouchscreens.com>, <microtouch.mobi>, <microtouch.net>, <microtouchscreen.com>, and <microtouchscreens.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 12, 2011; the National Arbitration Forum received payment on October 12, 2011.
On October 13, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <3mmicrotouch.mobi>, <3mtouch.mobi>, <3mtoch.com>, <3mtuch.com>, <3mtouchscreen.com>, <3mtouchscreens.com>, <microtouch.mobi>, <microtouch.net>, <microtouchscreen.com>, and <microtouchscreens.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 October 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 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@3mmicrotouch.mobi, postmaster@3mtouch.mobi, postmaster@3mtoch.com, postmaster@3mtuch.com, postmaster@3mtouchscreen.com, postmaster@3mtouchscreens.com, postmaster@microtouch.mobi, postmaster@microtouch.net, postmaster@microtouchscreen.com, and postmaster@microtouchscreens.com. Also on October 13, 2011, 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.
A timely Response was received and determined to be complete on November 3, 2011.
Complainant submitted an Additional Submission that was received and determined to be timely on November 3, 2011.
Respondent submitted an Additional Submission that was received and determined to be timely on November 7, 2011.
On November 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that the domain names at issue are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; the Respondent has no rights or legitimate interests in the domain names at issue; and that the domain names at issue were registered and are being used in bad faith.
B. Respondent
Respondent contends that they have a legitimate interest in the domain names at issue and is not acting in bad faith.
C. Additional Submissions
Complainant’s Additional Submission states that Respondent does not challenge that the domains names at issue are confusingly similar to Complainant’s mark; that Respondent allegations do not support a finding of Rights or Legitimate Interest under 4.a.(ii); and Respondent’s allegations do not negate its bad faith.
Respondent’s Additional Submission states that Respondent does not challenge that the domain names at issue contain Complainant’s mark; that Respondent has rights or legitimate interests in the domain names at issue; and that they are willing to sell the domain names at issue to Complainant.
Over the past century, Complainant has used the 3M trademark in commerce. Complainant has expanded its use of the mark and presently offers over 50,000 products and services in a wide variety of fields under the mark. The 3M trademark has been registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,291,115 registered November 9, 1999). Also, the MICROTOUCH mark was registered with the USPTO (Reg. No. 1,282,227 registered June 19, 1984).
Respondent is engaged in the business of selling many brands and types of touch screens, as well as building custom touch screen solutions.
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.
Each disputed domain name begins with the 3M mark (<3mtouch.mobi>, <3mtoch.com>, <3mtuch.com>, <3mtouchscreen.com>), followed by one or more of the following: the term “touch,” a misspelled version of the term “touch” (“toch” or “tuch”), the term “screen” or “screens,” and the generic top-level domains (“gTLDs”) “.mobi.” Complainant contends that the <3mtouch.mobi>, <3mtoch.com>, <3mtuch.com>, <3mtouchscreen.com>, and <3mtouchscreens.com> are confusingly similar to the 3M mark. Adding descriptive terms or misspelled versions of such terms to Complainant’s mark does not dispel confusing similarity. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark); see also Time Warner Inc. v. Zone MP3, FA 1008035 (Nat. Arb. Forum July 25, 2007) (holding that the disputed domain name <moneymagizine.com>, containing a misspelled version of the descriptive term “magazine,” was confusingly similar to the MONEY mark). The Panel may also find that gTLDs “.mobi” and “.com” do not distinguish the disputed domain names. See Starkey v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007) (“The suffix .mobi should be treated the same way as .com and should be ignored when comparing the mark and the disputed domain name.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Respondent’s <3mtouch.mobi>, <3mtoch.com>, <3mtuch.com>, <3mtouchscreen.com>, and <3mtouchscreens.com> domain names are confusingly similar to Complainant’s 3M mark according to Policy ¶ 4(a)(i).
Respondent’s <microtouch.mobi> and <microtouch.net> domain names combine Complainant’s MICROTOUCH mark with the generic top-level domain (“gTLD”) “.mobi” or “.net.” Respondent’s <microtouch.mobi> and <microtouch.net> domain names are identical to Complainant’s MICROTOUCH mark pursuant to Policy ¶ 4(a)(i). See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (finding the <vanderbilt.mobi> domain name to be identical to the VANDERBILT mark because it did not add anything except the generic top-level domain “.mobi”); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to the complainant’s MYSTIC LAKE trademark and service mark).
Respondent’s <microtouchscreen.com> and <microtouchscreens.com> domain names are confusingly similar to Complainant’s MICROTOUCH mark. Respondent’s disputed domain names combine Complainant’s MICROTOUCH mark with one or more of the following: the descriptive terms “screen” or “screens” and the gTLD “.mobi” or “.com.” As seen in Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005), and Wells Fargo & Co. v. Bogucki, FA 147305 (Nat. Arb. Forum Apr. 16, 2003), prior panels have held that added descriptive terms do not differentiate disputed domain names. Panels have also denied the importance of the added “.mobi” or “.com” gTLD in Starkey v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007), and Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003). The Panel may again find accordingly and hold that Respondent’s <microtouchscreen.com> and <microtouchscreens.com> domain names are confusingly similar to Complainant’s MICROTOUCH mark pursuant to Policy ¶ 4(a)(i).
No evidence has been presented to confirm Respondent is commonly known by the 3M or MICROTOUCH marks and does not operate a business or other organization under either name. Complainant asserts that Respondent is not an authorized distributor of Complainant’s 3M products and has not been authorized to use the 3M or MICROTOUCH marks or logos. The WHOIS record for each disputed domain name lists the registrant as “Touch Screens Inc.,” which is insufficient to show an association between Respondent and the disputed domain names. As it appears Respondent is not commonly known by the disputed domain names they consequently lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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”).
Respondent uses the disputed domain names to host web pages that advertise and offer various touch screen products, including some of Complainant’s 3M MICROTOUCH products and products of Complainant’s competitors, such as ELO, GVISION, KEYTECH, etc. While Respondent may have completed training as an “integrator,” this designation does not make Respondent an authorized reseller and does not give Respondent rights to use the 3M and MICROTOUCH marks in domain name registrations. Respondent also does not meet the well-established requirements for a legitimate reseller as the disputed domain names promote products other than Complainant’s, do not disclose the relationship between Complainant and Respondent with an appropriate disclaimer, and seem to be attempting to corner the market in domain names incorporating Complainant’s marks because of the number of domain names registered by Respondent. Selling Complainant’s products, along with the products of Complainant’s competitors, under Complainant’s mark without being an authorized reseller is not consistent with the Policy ¶¶ 4(c)(i) and 4(c)(iii) requirements for a bona fide offering of goods or services or a legitimate noncommercial or fair use. See 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)); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
Respondent offered to sell the disputed domain names to Complainant for $3,400. Respondent admits that this price is in excess of Respondent’s out-of-pocket costs. Based on this information, Respondent’s offer to sell the disputed domain names to Complainant for more than Respondent’s out-of-pocket registration costs is evidence that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
The evidence presented reveals that in Respondent’s most recent communication with Complainant, Respondent offered to sell the disputed domain names, along with two other “.us” domain names, to Complainant for $3,400. Respondent’s offer to sell these domain names for an amount well above out-of-pocket costs further indicates Respondent’s bad faith registration and use according to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).
Respondent has registered ten disputed domain names that misappropriate either Complainant’s 3M or MICROTOUCH marks. Registering such a number of domain names that include Complainant’s mark without authorization constitutes a pattern of bad faith registration of domain names under Policy ¶ 4(b)(ii). Respondent’s bad faith is clearly demonstrated by its pattern of activity in registering and using the disputed domain names and that Respondent’s allegations do nothing to negate that bad faith. The Panel may agree with Complainant under Policy ¶ 4(b)(ii). See Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
Respondent’s websites resolving from the disputed domain names advertise a variety of touch screen products manufactured both by Complainant and Complainant’s competitors. These competing products are advertised under Complainant’s 3M and MICROTOUCH marks and that Respondent’s website offering these products diverts consumers seeking Complainant away from Complainant. Respondent has shown bad faith registration and use under 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 Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent uses the disputed domain names that take advantage of Complainant’s marks in order to intentionally attract Internet users seeking Complainant and its products. The disputed domain names and the content of the resolving websites create a likelihood of confusion among the Internet as to the source or affiliation of Respondent’s websites, which translates into profit for Respondent when those diverted Internet users purchase any of the products advertised on the resolving website. Respondent’s efforts to exploit Complainant’s marks for its own profit by attracting and confusing Internet users at its competing commercial website signal bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <3mmicrotouch.mobi>, <3mtouch.mobi>, <3mtoch.com>, <3mtuch.com>, <3mtouchscreen.com>, <3mtouchscreens.com>, <microtouch.mobi>, <microtouch.net>, <microtouchscreen.com>, and <microtouchscreens.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: November 22, 2011
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