3M Company v. xiankai zeng
Claim Number: FA1211001473769
Complainant is 3M Company (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is xiankai zeng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <3m-privacy-filter.org>, registered with Name.Com, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2012; the National Arbitration Forum received payment on November 30, 2012.
On December 3, 2012, Name.Com, LLC; confirmed by e-mail to the National Arbitration Forum that the <3m-privacy-filter.org> domain names is registered with Name.Com, LLC and that Respondent is the current registrant of the name. Name.Com, LLC has verified that Respondent is bound by the Name.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 December 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 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@3m-privacy-filter.org. Also on December 10, 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 January 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i. Respondent is not commonly known by the name “3M,” nor does Respondent operate a business or other organization under the mark or name “3M.”
ii. Respondent is using the disputed domain name to divert customers seeking to buy 3M privacy filters, and sells counterfeit 3M privacy filters and other products not made by 3M to those customers.
i. Respondent has engaged in a pattern of registering other domain names incorporating the 3M mark, which were previously transferred under the UDRP and usDRP.
ii. Respondent is using the disputed domain name to misleadingly divert consumers for its own commercial gain.
iii. Respondent had actual knowledge of 3M’s trademark rights at the time Respondent registered and began using the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is 3M Company who lists its address as St. Paul, MN, USA. Complainant has been using the 3M mark for over a century throughout the world. 3M Company owns over 200 registrations for 3M and the 3M family of marks in the USA. Complainant owns more than 2,800 registrations for the 3M mark and logo worldwide including many in China. Complainant also has established a wholly owned subsidiary known as 3M China Ltd. which has facilitated the sale of various goods and services in China for many decades. Complainant has operated its business in real space as well as cyberspace at its websites found at <3M.com>, and <3Mprivacyfilter.com>. Complainant’s 3M mark has been found to be famous in judicial proceedings in the USA.
Respondent is Xiankai Zeng who list his or her address in part as GuangZhou GuangDong, China. Respondent registered the domain name on December 3, 2012 with a registrar whose address is listed as Denver, CO, USA.
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.
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.”).
Complainant, 3M Company, argues that it presently offers over 50,000 products and services in a wide variety of fields, including a wide range of accessories for computers and related consumer electronics. Complainant asserts that it markets its products and services through its website at <www.3m.com>. Complainant contends and shows that it owns trademark registrations with the USPTO for the 3M mark (e.g., Reg. No. 1,275,187, registered April 24, 1984). See Complainant’s Exhibit C. Complainant also asserts and shows that it owns trademark registrations with China’s SAIC for the 3M mark (Reg. No. 138,324, registered July 5, 1980). See Complainant’s Exhibit C. Complainant also argues that it owns and shows evidence of trademark registrations for the 3M mark with various trademark agencies in numerous countries throughout the world. See Complainant’s Exhibit C. The Panel finds that Complainant’s trademark registrations with the USPTO and SAIC sufficiently establish its rights in the 3M mark pursuant to Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).
Complainant argues that Respondent’s <3m-privacy-filter.org> domain name is confusingly similar to Complainant’s 3M mark as it incorporates Complainant’s mark in its entirety and adds the common descriptive term “privacy-filter.” Complainant contends that the descriptive term “privacy-filter” refers to a category of products which attach directly over computer monitor screens, limiting the “angle of vision to a front view so that visitors in the room cannot casually see the display.” Complainant contends that it sells privacy filters. See Complainant’s Exhibit B. The Panel finds that Respondent’s addition of a descriptive term to the disputed domain name does not adequately distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The Panel notes that Respondent adds hyphens between Complainant’s 3M mark and the descriptive term “privacy filter.” The Panel finds that the addition of hyphens does not create any distinction between Respondent’s disputed domain names and Complainant’s mark under Policy ¶ 4(a)(i). See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). The Panel also notes that Respondent adds the generic top-level domain (“gTLD”) “.org” to the disputed domain name but finds such addition irrelevant to a Policy ¶ 4(a)(i) analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Thus, the Panel concludes that there is confusing similarity between Respondent’s <3m-privacy-filter.org> domain name and Complainant’s 3M mark according to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant argues that Respondent is not commonly known by the name “3M,” nor does Respondent operate a business or other organization under the mark or name “3M.” The Panel notes that the WHOIS information for the disputed domain name identifies “xiankai zeng” as the registrant. See Complainant’s Exhibit A. The Panel further notes that Respondent has not provided any additional evidence that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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).
Complainant contends that Respondent is using the disputed domain name to divert customers seeking to buy 3M privacy filters, and sells counterfeit 3M privacy filters and other competing products not made by 3M to those customers. See Complainant’s Exhibit F. Complainant argues that the items on Respondent’s website bear the prominent red 3M logo and create the false impression that 3M is operating these sites and/or is the source or manufacturer of these items or is affiliated with these websites. The Panel finds that Respondent’s use of the disputed domain name to sell counterfeit or competing goods is not 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). See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent is using the disputed domain name to misleadingly divert consumers for its own commercial gain. Complainant contends that Respondent uses the disputed domain name to intentionally attempt to attract Internet searchers to its website to sell privacy filters and other products not manufactured by Complainant, such as iPhone screen protectors. See Complainant’s Exhibit F. The Panel finds that Respondent’s use of the disputed domain name to sell counterfeit and competing products constitutes attraction for commercial gain, which demonstrates bad faith use and registration under Policy ¶ 4(b)(iv). See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant contends that Respondent had actual knowledge of 3M’s trademark rights at the time Respondent registered and began using the disputed domain name. The Panel finds that Respondent’s actual knowledge of Complainant’s rights in the 3M mark is demonstrated by Respondent’s use of the 3M logo and sale of counterfeit 3M products on Respondent’s website. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <3m-privacy-filter.org> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 18, 2013
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