3M Company v. Above.com Legal
Claim Number: FA1211001469850
Complainant is 3M Company (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Above.com Legal (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <littmannstethoscope.us>, registered with Above.com Pty Ltd.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 5, 2012; the National Arbitration Forum received a hard copy of the Complaint on November 5, 2012.
On November 7, 2012, Above.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <littmannstethoscope.us> domain name is registered with Above.com Pty Ltd and that Respondent is the current registrant of the name. Above.com Pty Ltd has verified that Respondent is bound by the Above.com Pty Ltd registration agreement and has 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 November 14, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 4, 2012, 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 December 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has 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. Respondent’s < littmannstethoscope.us > domain name, the domain name at issue, is confusingly similar to Complainant’s LITTMANN mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant owns the LITTMANN family of trademarks that it uses to market and sell a variety of products and services in the medical industry, including for stethoscopes. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for the LITTMANN mark (e.g., Reg. No. 751,809 registered June 25, 1963). Respondent’s <littmannstethoscope.us> domain name is confusingly similar to Complainant’s LITTMANN mark, as the addition of a descriptive term fails to adequately distinguish the disputed domain name from the mark. Further, the addition of the “.us” to a mark is not a distinguishing feature. Respondent is not commonly known by the disputed domain name and has not received permission to use the mark. The WHOIS information identifies “Above.com Legal” as the domain name registrant. Respondent is using the disputed domain name to forward Internet users to other third-party websites and is attempting to sell the disputed domain name. Respondent’s registration and use of the disputed domain name shows that Respondent had knowledge of Complainant’s rights in the mark prior to registering the disputed domain. Respondent has used the disputed domain name to divert Internet users to other websites and this disrupts Complainant’s business. Respondent has registered the disputed domain name in order to attract consumers to its website by creating a likelihood of confusion with Complainant’s marks. The <littmannstethoscope.us> domain name was registered on June 26, 2012.
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 or 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.”).
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 owns the LITTMANN family of trademarks that it uses to market and sell a variety of products and services in the medical industry, including for stethoscopes, and it owns several trademark registrations with the USPTO for the LITTMANN mark (e.g., Reg. No. 751,809 registered June 25, 1963). Despite Respondent’s location in Australia, the Panel finds that Complainant’s trademark registrations with the USPTO for the LITTMANN mark are sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to UDRP ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Further, Respondent’s <littmannstethoscope.us> domain name is confusingly similar to Complainant’s LITTMANN mark, as the addition of a descriptive term fails to adequately distinguish the disputed domain name from the mark. The Panel notes that Complainant markets stethoscopes under the LITTMANN mark, making the added term “stethoscope” descriptive of Complainant’s products. Further, the addition of the country-code top-level domain (“ccTLD”) “.us” to a mark is not a distinguishing feature. Accordingly, the <littmannstethoscope.us> domain name is confusingly similar to Complainant’s LITTMANN mark under Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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.”).
There is no evidence on record to indicate that Respondent possesses trademark or service mark rights in the <littmannstethoscope.us> domain name. Therefore, Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Further, Respondent is not commonly known by the disputed domain name and has not received permission to use the mark. The WHOIS information identifies “Above.com Legal” as the domain name registrant. Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii), where there is no evidence indicating such in the record. See 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 is using the disputed domain name to forward Internet users to other third-party websites and is attempting to sell the disputed domain name. Respondent’s resolving website appears to resolve to a standard pay-per-click site with “Related Searches” of “Littmann,” “3M Littmann Stethoscope,” “Stethoscope Deals,” and many other unrelated link headings. Such use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)).
Further, the Panel notes that Complainant’s Exhibit 7 contains a screenshot of a <sedo.com> auction page identifying the disputed domain name for sale with a place to make an offer. Prior UDRP panels have held that the auctioning of a disputed domain name is evidence of a respondent’s lack of rights and legitimate interests in the domain name. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”). The Panel agrees with such precedent, and determines that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) where it is attempting to sell the domain name through an auction site.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s use of the disputed domain name to divert Internet users to other websites disrupts Complainant’s business. As noted above, Complainant’s screenshot evidence indicates that Respondent’s resolving website appears to resolve to a standard pay-per-click site with “Related Searches” of “Littmann,” “3M Littmann Stethoscope,” “Stethoscope Deals,” and many other unrelated link headings. The Panel infers that the terms listed as “Related Searches” resolve to websites of Complainant’s competitors, and thus finds that Respondent is intentionally disrupting Complainant’s business of selling stethoscopes. Accordingly, the Panel finds that Respondent both registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Further, Respondent has registered the disputed domain name in order to attract consumers to its website by creating a likelihood of confusion with Complainant’s marks. As noted above, Respondent’s website features many third-party links, redirecting Internet users to the linked-to websites. Therefore, the Panel finds that Respondent registered and is using the <littmannstethoscope.us> domain name in bad faith under 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).”).
Respondent’s registration and use of the disputed domain name shows that Respondent had knowledge of Complainant’s rights in the mark prior to registering the disputed domain name. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); 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).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <littmannstethoscope.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 22, 2012
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