3M Company v. Rudy Silva
Claim Number: FA1202001429349
Complainant is 3M Company (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minneapolis, Minnesota, USA. Respondent is Rudy Silva (“Respondent”), Playa del Rey, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <littmanncardiologyiii.info> (the “Disputed Domain Name”), registered with Key-Systems GmbH (“Registrar”).
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.
Douglas M. Isenberg as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 13, 2012; the National Arbitration Forum received payment on February 13, 2012.
On February 17, 2012, Registrar confirmed by e-mail to the National Arbitration Forum that the Disputed Domain Name is registered with Registrar and that Respondent is the current registrant of the name. Registrar has verified that Respondent is bound by the Registrar’s 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 “UDRP”).
Also on February 17, 2012, the Forum informed Complainant that the Complaint was deficient with respect to the location of mutual jurisdiction. Complainant submitted an amended Complaint on the same date, correcting this deficiency.
On February 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 2012, 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@littmanncardiologyiii.info. Also on February 21, 2012, the 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.
A timely Response was received and determined to be complete on March 8, 2012.
Complainant’s Additional Submission was received on March 8, 2012, and deemed to be in compliance with Supplemental Rule 7.
Respondent’s Additional Submission was received on March 13, 2012, and deemed to be in compliance with Supplemental Rule 7.
On March 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Douglas M. Isenberg as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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.
Complainant requests that the Disputed Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it “is the owner of the LITTMANN family of trademarks used with a variety of products and services in the medical industry” and that Complainant “and its predecessor in interest have used the LITTMANN mark in commerce continuously since at least as early as 1942.” Further, Complainant states that “[s]ince at least as early as June 1987, [Complainant] has sold certain LITTMANN brand stethoscopes under the CARDIOLOGY III mark” and that “[t]he CARDIOLOGY III brand stethoscopes are known for their uniquely shaped chest pieces.” In support thereof, Complainant has cited and provided relevant documentation for the following trademark registrations owned by Complainant, all used in connection with stethoscopes: U.S. Reg. Nos. 751,809; 1,115,217; 2,683,822; and 2,681,330 (each consisting of or containing the mark LITTMANN); and 3,619,324 (for the mark CARDIOLOGY III).
Complainant further states that Respondent is using the Disputed Domain Name in connection with a website that is “associated… with various Amazon.com product links that are directed to third parties who sell stethoscopes” and that “Respondent has taken a 3M promotion video and placed that video on its website, which gives the appearance that Respondent’s website is affiliated, associated, connected to or endorsed by [Complainant].”
Complainant contends, in relevant part, that:
1. The Disputed Domain Name is confusingly similar to Complainant’s LITTMANN and CARDIOLOGY III trademarks.
2. Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “its intent in registering the domain name was to divert traffic away from 3M”; “it is not commonly known by the mark and has not received permission from 3M to use the mark”; and “Respondent’s use of the LITTMANNCARDIOLOGYIII.INFO domain name misappropriates 3M’s goodwill and cheats consumers into clicking on Respondent’s website when they think they will see information regarding 3M and its branded products and services.”
3. The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “at the time the name was registered, Respondent was on notice of 3M’s rights” given that “[t]here was no basis for Respondent to register the domain name other than to infringe on 3M’s rights and take advantage of 3M’s goodwill”; Respondent has used the Disputed Domain Name “to divert traffic away from 3M’s own website to Respondent’s website”; and “Respondent registered the domain name in order to trade on 3M’s goodwill associated with its LITTMANN and CARDIOLOGY III marks by creating a likelihood of confusion as to the source of the website.”
B. Respondent
Respondent states that it registered the Disputed Domain Name “with no mal-intentions” and that its “only intentions were to promote this product as an affiliate and not to discredit or harm the owner of the main domain name, Littmann.” Further, Respondent states that its website associated with the Disputed Domain Name “no longer exists and I am not disputing that I have rights to” the Disputed Domain Name.
C. Additional Submissions
In its additional submission, Complainant states that, inter alia, “Respondent’s removal of all content from the website associated with the domain name littmanncardiologyiii.info shows a lack of legitimate rights pursuant to UDRP ¶ 4(a)(ii) as well as bad faith pursuant to pursuant to UDRP ¶ 4(a)(iii)” and that “Respondent’s admissions regarding its use of the website as part of affiliate marketing show bad faith.”
In its additional submission, Respondent states, inter alia: “In us[ing] the word Littmann in a domain name, it was not my intention to create deception. There is no deception in the word Littmann. The domain name littmanncardiologyiii.info was freely available and the Amazon Affiliate program provided the banners to use to promote the Littmann product.”
Based on the evidence, the Panel finds that Complainant has rights in and to the trademark LITTMANN (the oldest cited registration of which was first used in commerce in 1942) and the trademark CARDIOLOGY III (the oldest cited registration of which was first used in commerce in commerce in August 1997).[1]
The Panel further finds that the Disputed Domain Name was created on November 22, 2011, and has been used in connection with a website that contained information about the “Littmann Cardiology III stethoscope” along with advertisements as part of Respondent’s role as an affiliate of Amazon.com.
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 UDRP 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.
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."
Based upon the trademark registrations cited by Complainant, as described above, it is apparent that Complainant has rights in the trademarks LITTMANN and CARDIOLOGY III. With respect to the LITTMANN trademark, this finding is consistent with previous panels that also have considered the same trademark, including 3M Co. v. Para-Flex Medical Supplies, Inc., FA 842935 (Nat. Arb. Forum Dec. 29, 2006) (transfer of <littmannscope.com>) and 3M Co. v. Smith, FA 1411354 (Nat. Arb. Forum Nov. 15, 2011) (transfer of <littmannmastercardiologystethoscope.com>).
As to whether the Disputed Domain Name is identical or confusingly similar to the LITTMANN and CARDIOLOGY III trademarks, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “littmanncardiologyiii”), as it is well-established that the top-level domain name (i.e., “.info”) should be disregarded for this purpose.
The Panel agrees with the decision cited by Complainant (also relating to the LITTMANN trademark) that “[t]he combination of marks does not achieve the goal of differentiating the disputed domain name from the Complainant’s mark.” See 3M Co. v. Smith, FA 1411354 (Nat. Arb. Forum Nov. 15, 2011); see also Citigroup, Inc., MasterCard Int’l Inc.v. Domain Proxies, LLC, D2008-0951 (WIPO Aug. 17, 2008) (“[t]he Panel finds that each of the trademarks CITI and MASTERCARD is so distinctive that use of the combination CITIMASTERCARD in the disputed Domain Name is confusingly similar to each of the Complainants’ trademarks”).
Accordingly, the Panel finds that Complainant has proven the first element of the UDRP.
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “its intent in registering the domain name was to divert traffic away from 3M”; “it is not commonly known by the mark and has not received permission from 3M to use the mark”; and “Respondent’s use of the LITTMANNCARDIOLOGYIII.INFO domain name misappropriates 3M’s goodwill and cheats consumers into clicking on Respondent’s website when they think they will see information regarding 3M and its branded products and services.”
Under the UDRP, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1. Here, not only has Respondent has failed to rebut Complainant’s prima facie case, but Respondent has admitted, “I have no legal rights to the Littman name.”
Accordingly, the Panel is satisfied that Complainant has proven the second element of the UDRP.
Whether a domain name is registered and used in bad faith for purposes of the UDRP may be determined by evaluating four (non-exhaustive) factors set forth in the UDRP: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. UDRP, paragraph 4(b).
In this case, Complainant specifically argues that bad faith exists pursuant to paragraphs 4(b)(ii), 4(b)(iii) and 4(b)(iv). For purposes of this decision, the Panel focuses on paragraph 4(b)(iv). In relation thereto, the Panel agrees with the decisions cited by Complainant that a website with advertisements and content related to a complainant’s products, under the circumstances that exist in this case, constitutes bad faith. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000); see also Le Dauphin Pirate Sarl v. Reto Stossel, FA 788274 (Nat. Arb. Forum Oct. 18, 2006). Although Respondent states, and the Panel has no reason to disbelieve, that “[n]o intentions were made to cause harm to Littmann products, but only to promote this product using legal affiliate banners, videos and information,” paragraph 4(b)(iv) speaks only to whether a disputed domain name “creat[es] a likelihood of confusion,” regardless of the domain name registrant’s intent.
Accordingly, the Panel is satisfied that Complainant has proven the third element of the UDRP.
Having established all three elements required under the ICANN UDRP, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <littmanncardiologyiii.info> domain name be TRANSFERRED from Respondent to Complainant.
Douglas M. Isenberg, Panelist
Dated: March 30, 2012
[1] U.S. Reg. No. 3,619,324 for CARDIOLOGY III appears to be the subject of a pending cancellation proceeding at the Trademark Trial and Appeal Board. However, this status does not affect Complainant’s rights for purposes of the UDRP.
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