national arbitration forum

 

DECISION

 

3M Company v. Bill Thornton

Claim Number: FA1203001436710

 

PARTIES

Complainant is 3M Company (“Complainant”), represented by William Schultz of Merchant & Gould, Minnesota, USA.  Respondent is Bill Thornton (“Respondent”), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue is <littmannreviews.com>, <littmannstethoscopereviews.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2012; the National Arbitration Forum received payment on March 27, 2012.

 

On March 28, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <littmannreviews.com> and <littmannstethoscopereviews.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 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@littmannreviews.com and postmaster@littmannstethoscopereviews.com.  Also on April 2, 2012, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On April 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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. 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

3M Company (hereafter “3M”) is the owner of the LITTMANN family of trademarks used with a variety of products and services in the medical industry.  3M and its predecessor in interest have used the LITTMANN mark in commerce continuously since at least as early as 1942.  Additionally, 3M is the owner of numerous registrations for the marks LITTMANN in the United States.  In particular, 3M is the owner of the following marks:

 

LITTMANN                [Stethoscopes]                      Reg. No. 751809      (USA)

LITTMANN                [Eartips for stethoscopes]    Reg. No. 1115217    (USA)

LITTMANN                [Full line of stethoscopes]    Reg. No. 2683822    (USA)

[Design Mark]            [Full line of stethoscopes]    Reg. No. 2681330    (USA)

 

The foregoing LITTMANN marks are hereinafter jointly referred to as 3M’s “LITTMANN Marks.”  3M also uses its mark in connection with several websites, including the website affiliated with the domain name littmann.com.  3M first registered and used the littmann.com domain name on August 5, 1997. 

 

            FACTUAL AND LEGAL GROUNDS

This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix); NAF Supp. Rule 4(a).

3M has a principal place of business in St. Paul, Minnesota.  3M was founded in 1902.  It has grown into a diversified technology company serving customers and communities worldwide with thousands of innovative products and services.  3M first began marking stethoscopes under the LITTMANN brand in 1967 when it acquired Cardiosonics Inc., a company founded by David Littmann, M.D.  Dr. Littmann was a noted cardiologist, Harvard Medical School professor, researcher, and inventor who patented a revolutionary new stethoscope with greatly improved acoustics. 

 

3M’s LITTMANN Marks are distinctive, widely recognized trademarks.  LITTMANN branded stethoscopes have become the paragon in the medical industry against which all other stethoscopes are measured.  Since 1942, the LITTMANN brand has enjoyed strong customer recognition, as documented by its proprietary marks used in connection with the sale of medical products in commerce.  3M and its LITTMANN Marks enjoy a strong reputation among consumers for offering quality, well-respected name brand stethoscope as shown on its website, littmann.com.

 

3M has invested substantial sums of money in developing and marketing its products and services under its LITTMANN Marks and has developed substantial goodwill and customer loyalty under those marks.  As a result, consumers throughout the world recognize the LITTMANN Marks as an indicator of 3M's stethoscope products.

 

At the time 3M initially filed its Complaint, the registrant of the domain names was GRx Medical.  GRx Medical had registered the domain names LITTMANNREVIEWS.COM and LITTMANNSTETHOSCOPEREVIEWS.COM (hereinafter, the “Domain Names”).  The administrative email address was bthornton2@cox.net.  (Id.)  Upon information and belief, GRx Medical registered the Domain Names with the Registrar Godaddy.com, Inc. (“Godaddy”) using Godaddy’s registration services on or about March 7, 2012, under Godaddy’s domain registration policy.  After 3M filed its Complaint in this matter, the domain name registrant modified the WHOIS related to the domain names at issue to reflect “bill thornton” as the registrant (“Respondent”).  The administrative email address remains bthornton2@cox.net.  Respondent then emailed stating “I would be happy to delete the domain names littmannreviews.com and littmannstethoscopereviews.com.”

 

The Respondent has no statutory or common law trademark rights or any other right or legitimate interest to 3M’s LITTMANN Marks, the mark LITTMANN, the mark or the Domain Names.  3M has not authorized or licensed Respondent to use 3M’s LITTMANN Marks or any derivative mark for any purpose.  3M's rights in the LITTMANN mark date back to 1942.  3M’s predecessor in interest first took steps to protect its valuable LITTMANN Marks years before the Respondent registered the Domain Names.  As such, there is no controversy as to the fact that 3M has priority over Respondent.

 

The Respondent has registered and used domain names that are confusingly similar to the LITTMANN Marks in bad faith.  There is no evidence the Domain Names were registered for a legitimate reason.  Rather, the Domain Names resolve to websites that contain commercial links to third party websites selling stethoscope and other medical products.  Examples of those links are set forth below for each site:

 

[Image Redacted]

 

Respondent is 3M’s direct competitor.  As shown on Respondent’s website, grxmedical.com, Respondent sells stethoscopes and other diagnostic products just like 3M under its LITTMANN brand.  Further, Respondent has specific knowledge of 3M’s LITTMANN Marks.  In 2010, 3M sent Respondent a cease and desist letter regarding Respondent’s infringing use of 3M’s trademarks, including the LITTMANN trademark.  Additionally, Respondent has placed 3M’s marks as part of the meta data on its website located at grxmedical.com:

[Image Redacted]

Respondent’s infringing use of 3M’s marks as part of its meta data shows that Respondent is aware of 3M’s LITTMANN marks.

 

The evidence shows the Domain Names were registered to trade upon the goodwill associated with 3M’s LITTMANN mark.  The Domain Names resolve to websites that contain commercial links to third parties.  That is not a legitimate use.  That is bad faith.  Transfer of the Domain Names to 3M is appropriate. 

a.       The Domain Names are Confusingly Similar to 3M’s LITTMANN Marks.

The Domain Names are confusingly similar to 3M’s LITTMANN Marks.  The Domain Names fully incorporate 3M’s LITTMANN marks.  The addition of the generic terms “reviews” and “stethoscopereviews” in the disputed Domain Names does not change the fact the Domain Names convey the same commercial impression as 3M’s LITTMANN Marks.  3M Company v. Domain Librarian c/o Orion Foundry (Canada) ulc, FA1139111 (Nat. Arb. Forum, Feb. 27, 2008) (holding addition of generic term “stethoscopes” in littmannstethoscopes.info did not serve to distinguish from 3M’s LITTMANN mark); 3M Company v. Whois Service c/o Belize Domain WHOIS Service Lt, FA1146562 (Nat. Arb. Forum, March 31, 2008) (same).   Further, the addition of the top-level domain is immaterial under the Policy.  See, e.g., Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis).  Therefore the Domain Names are confusingly similar to 3M’s LITTMANN marks.

 

b.       The Respondent Does Not Have Any Right or Legitimate Interest in the Domain Names.

Respondent does not have any right or legitimate interest in the Domain Names.  The registration of a domain for the purpose of redirecting Internet users interested in another’s products is not a bona fide offering of goods pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy^[1] ¶4(c)(i).  Moreover, Respondent has no legitimate right to the names pursuant to Policy ¶4(c)(ii) in that it has not received permission to use the mark and is offering the domain names for sale.  Furthermore, Respondent is not using the mark for legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) because Respondent uses the sites for commercial purposes.

 

1.   Respondent has not used the Domain Names in Connection with a Bona Fide Offering of Goods or Services in that the Intent was to Cause Unsuspecting Consumers to Veer away from 3M’s Site.

A respondent’s use of the domain names to trick consumers into visiting its website instead of the trademark owner’s site is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i)”).  Indeed, the use of a domain name to forward Internet users to a third party product page does not constitute a bona fide use of a domain name. Seiko Epson Corporation and Epson America, Inc. v. H.M., LLC, FA1008001341798 (Nat. Arb. Forum, Oct. 5, 2010) (holding use of links to third parties who sold complainant’s goods was not a bona fide offering of goods or services under Policy ¶4(c)(i)); Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).

 

Respondent does not have a bona fide interest in the Domain Names pursuant to Policy ¶4(c)(i) in that its intent in registering the Domain Names was to divert traffic away from 3M.  The evidence shows that Respondent registered domain names that have the commercial impression of the LITTMANN Marks.  Consumers seeing those Domain Names in search results are likely to believe that the Domain Names and associated websites are affiliated with 3M.  Unsuspecting consumers attempting to visit 3M’s website are likely to visit Respondent’s website because of the confusing name.  When they arrive at Respondent’s websites, they are confronted with commercial links referring consumers to third party websites that purport to sell 3M’s products as well as competitor’s products.  Respondent, in turn, profits off the confusion by forwarding users to third parties without 3M’s permission, gaining pay-per-click revenue on any click-throughs.^[2]  (See http://www.godaddy.com/parking/domain-name-parking.aspx.)  Respondent’s use of the domain names cannot be bona fide in that its intent is to cause confusion.

 

2.   Respondent has no Legitimate Right in the Domain Names because 3M has not Granted Registrant Permission to use the Names.

Respondent also has no legitimate rights pursuant to Policy ¶4(c)(ii) in that it is not commonly known by the mark and has not received permission from 3M to use the mark.  Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name).  A domain name registrant is presumed not to have a legitimate interest in a domain name where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; and (3) Respondent is not commonly known by the domain name.  Policy ¶4(c)(ii); Gallup, Inc. v. Amish Country Store, FA96209 (Nat. Arb. Forum Jan. 23, 2001) (holding that Respondent does not have rights in a domain name when Respondent is not known by the mark).  Furthermore, it is “incumbent upon respondents to advance concrete evidence pursuant to Policy ¶4(a)(ii) rebutting the latter assertion because this information is uniquely within the knowledge and control of the respondent.”  Wilson v. Whois Privacy Protection Service, Inc., FA0502000417186 (Nat. Arb Forum March 29, 2005). 

Respondent does not have a legitimate interest in the Domain Names.  3M has not licensed its LITTMANN Marks to Respondent.  3M’s prior rights to the trademark LITTMANN dating back to at least as early as 1942 precede Respondent’s domain name registrations.  Additionally, Respondent is not commonly known by the name LITTMANN.  Indeed, the WHOIS report shows that Respondent is “GRx Medical”, a 3M competitor.  The domain names LITTMANNREVIEWS.COM and LITTMANNSTETHOSCOPEREVIEWS.COM clearly do not refer to Respondent.

 

3.   Respondent’s Diversion of Traffic to a Website Offering Commercial Products is not a Legitimate Use. 

Respondent is also not using the Domain Names for a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) because the names are used commercially.  The websites associated with the Domain Names contain commercial links to third parties.  Moreover, Respondent’s use of the Domain Names 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. 

 

c.       The Domain Names Have Been Registered and Used In Bad Faith

Respondent’s registration of domain names in association with 3M’s LITTMANN Marks shows the registration was in bad faith.  Respondent’s registration of domain names with the constructive knowledge of 3M’s trademark rights in that name shows bad faith pursuant to Policy ¶4(b)(ii).  Because Respondent’s websites associated with the Domain Names are aimed at taking customers away from 3M, thereby disrupting 3M’s business, Respondent has also acted in bad faith pursuant to Policy ¶4(b)(iii).  Respondent’s intentional attempt to attract Internet users to its websites by using names that are confusingly similar to the LITTMANN Marks is also in violation of Policy ¶4(b)(iv). 

 

1.   Respondent Registered the Domain Names in Bad Faith Knowing of 3M’s Trademark Rights in that Brand.

Respondent’s registration of the Domain Names was in bad faith pursuant to Policy ¶4(b)(ii) because at the time the name was registered, Respondent knew of 3M’s rights.  Knowingly registering domain names that contain a third party’s marks constitutes bad faith.  Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (finding bad faith where Respondent engaged in the practice of registering domain names containing the marks of others).  Further, “there is a legal presumption of bad faith when [a] Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”  Digi Int’l v. DDI Sys., FA124506 (Nat. Arb. Forum Oct 24, 2002); see also Pavillion Agency, Inc. v. Greenhouse Agency, Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the domain names are so obviously connected with Complainant that the use or registration by anyone other than Complainant suggests opportunistic bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration). 

 

Respondent had actual knowledge of 3M’s LITTMANN Marks.  On April 15, 2010, 3M sent a cease and desist letter to Respondent informing Respondent of 3M’s rights in the LITTMANN mark.  Despite that knowledge, Respondent registered the Domain Names fully aware of 3M’s trademark rights.  There was no basis for Respondent to register the domain names other than to infringe on 3M’s rights and take advantage of 3M’s goodwill.  That is bad faith.

 

2.   Respondent Acted in Bad Faith when It Diverted Customers from 3M.

Respondent’s diversion of traffic from 3M’s own website also shows bad faith pursuant to Policy ¶4(b)(iii).  See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶4(b)(iii) where that respondent used the domain name to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business).  Bad faith intent to divert traffic has been presumed in cases where a respondent and a complainant were in the same line of business in the same market area. Lubbock Radio Paging v. Venture Tele‑Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000).   

 

Respondent, who is in the same line of business as 3M, uses the disputed Domain Names to divert traffic away from 3M’s own website to Respondent’s website.  Respondent then provides links to products that divert traffic again to third parties.  Respondent benefits from that diversion by obtaining click-through revenue related to the advertisements on its website.^[3]  Such use of the domain names is bad faith.

 

3.   Respondent Acted in Bad Faith by Intentionally Attempting to Attract Internet Users to Its Website for Commercial Gain by Creating a Likelihood of Confusion with 3M’s LITTMANN Marks.

Bad faith intent pursuant to Policy ¶4(b)(iv) can be inferred from Respondent’s choosing to use a designation that it knows to be similar to another’s trademark in order to attract consumers to its website.  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website);  AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶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).  Bad faith is present where the respondent uses another’s mark as part of a parked page to provide links to third parties.  State Farm Mut. Auto. Ins. Co. v. Haan, FA0703000948470 (Nat’l Arb. Forum May 9, 2007) (“The Panel finds that appropriating another’s mark to provide links to competitors is evidence of bad faith registration and use” where the domain name resolved to a “parked” page provided by the registrar for the domain name). 

 

Here, Respondent registered domain names that have the commercial impression of 3M’s LITTMANN Marks and placed advertising and links to third parties via commercial pay-per-click links.  Respondent uses the domain names and the confusingly similar content to attract consumers to its website.  Respondent then profits from that content by generating traffic who click on the links and are forwarded to third party products.^[4]  Respondent is not licensed to use the LITTMANN mark.  Respondent has acted and continues to act in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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.

 

DISCUSSION

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 Complainant to prove each of the following three elements to obtain an order transferring or cancelling the domain name:

 

(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(e), 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 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.”).

 

Identical and/or Confusingly Similar

Complainant provides the Panel with copies of its USPTO trademark registrations for its LITTMANN mark (e.g., Reg. No. 751,809 registered June 25, 1963).  Previous panels have determined a USPTO trademark registration is adequate evidence a complainant holds rights in a mark.  See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶4(a)(i)); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office). Complainant has established rights in its LITTMANN mark pursuant to Policy ¶4(a)(i).

 

Complainant claims Respondent’s <littmannreviews.com> and <littmannstethoscopereviews.com> domain names are confusingly similar to Complainant’s LITTMANN mark.  Prior panels have found adding a generic or descriptive term and a generic top-level domain (“gTLD”) to a complainant’s mark does not sufficiently distinguish a disputed domain name from a mark.  See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶4(a)(i) is satisfied); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).

 

Complainant notes Respondent’s <littmanreviews.com> domain name consists of Complainant’s mark, the generic term “review,” and the gTLD “.com.”  Complainant also notes Respondent’s <littmanstethoscopereviews.com> domain name consists of Complainant’s mark, the generic term “review,” and the gTLD “.com.” The disputed domain name contains the descriptive term “stethoscope.” This Panel concludes Respondent’s <littmanreviews.com> and <littmanstethoscopereviews.com> domain names are confusingly similar to Complainant’s LITTMANN mark under Policy ¶4(a)(i).

 

 

Rights or Legitimate Interests

Complainant must first make a prima facie case 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 has rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant claims Respondent is not commonly known by the <littmannreviews.com> or <littmannstethoscopereviews.com> domain names and Complainant did not authorize Respondent to use Complainant’s LITTMANN mark. Prior panels have concluded a respondent is not commonly known by a disputed domain name if (i) the WHOIS information is not similar to the disputed domain name and (ii) the respondent fails to present any evidence in support of a commonly known by finding. 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 Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).  Complainant points out the initial WHOIS information identifies “GRx Medical” as the registrant of the disputed domain names.  Respondent is clearly not commonly known by the disputed domain names under Policy ¶4(c)(ii) because the WHOIS information is not similar to the disputed domain names and Respondent failed to submit any evidence it is commonly known by the disputed domain names.

 

Once this proceeding began, the registration of the domain name was changed from “GRx Medical” to Respondent.  The Panel’s analysis remains the same-Respondent is not commonly known by the domain names.  The Panel is also concerned the domain’s registration changed once these proceedings began.

 

Complainant claims Respondent is not using the disputed domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Past panels have found a respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use when the respondent uses the disputed domain name to resolve to a website that contains hyperlinks that compete directly with a complainant. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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)). Complainant claims the disputed domain names resolve to a site containing commercial links directing consumers to third-party websites that purport to sell Complainant’s products, as well as Complainant’s competitor’s products. The Panel holds Respondent’s use of the disputed domain names is neither a Policy ¶4(c)(i) bona fide offering of goods or services nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use of the <littmannreviews.com> and <littmannstethoscopereviews.com> domain names.

 

Registration and Use in Bad Faith

Complainant argues Respondent registered and is using the disputed domain names for the purpose of disrupting Complainant’s business.  Previous panels have found using a disputed domain name to divert Internet users to a website containing competing hyperlinks is evidence of 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 Policy ¶4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).  Complainant claims the disputed domain names provide links to Complainant’s competitor’s products. The Panel finds Respondent’s registration and use of the <littmannreviews.com> and <littmannstethoscopereviews.com> domain names constitutes bad faith under Policy ¶4(b)(iii).

 

Complainant claims Respondent is using the disputed domain names to attract Internet users for commercial gain. Prior panels have concluded using Complainant’s mark to attract Internet users to a website containing pay-per-click links to Complainant’s competitors for Respondent’s own profit is evidence of bad faith pursuant to Policy ¶4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). Complainant claims the disputed domain names resolve to a website containing links to third-parties who are Complainant’s direct competitors, via commercial pay-per-click links. Complainant claims Respondent uses a confusingly similar domain name to generate traffic who, by clicking on the links, generate commercial gain for Respondent. Under these circumstances, the Panel agrees Respondent registered and uses the disputed domain names in bad faith under Policy ¶4(b)(iv).

 

Complainant points out Respondent had constructive and actual notice of Complainant's rights in the LITTMANN mark prior to registration of the domain names.  Complainant sent a cease and desist letter to Respondent informing Respondent of Complainant’s rights in the LITTMANN mark on April 15, 2010.  Respondent registered the domain names on March 7, 2012.  While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel finds Respondent had actual notice of Complainant's mark and registered the disputed domain names in bad faith under Policy ¶4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <littmannreviews.com> and <littmannstethoscopereviews.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Thursday, April 26, 2012