3M Company v. Mirco Pinato / Pinato Graphics AG
Claim Number: FA1407001569074
Complainant is 3M Company (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Mirco Pinato / Pinato Graphics AG (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scotchcal.info>, registered with COREhub, S.R.L.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2014; the National Arbitration Forum received payment on July 10, 2014.
On July 11, 2014, COREhub, S.R.L. confirmed by e-mail to the National Arbitration Forum that the <scotchcal.info> domain name is registered with COREhub, S.R.L. and that Respondent is the current registrant of the name. COREhub, S.R.L. has verified that Respondent is bound by the COREhub, S.R.L. 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 July 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 2014 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@scotchcal.info. Also on July 11, 2014, 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 August 6, 2014, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
3M is an international provider of adhesive products, among many others goods and services. 3M has extensively used and advertised its SCOTCH brand for many years in association with a wide range of goods and services. The SCOTCH trademark is highly regarded, representing valuable goodwill to 3M. In particular, 3M is the owner of the following marks:
SCOTCHCAL 3,323,604 Plastic films for use in producing graphics, signs, labels and displays; plastic films for use as an overlaminate for protecting graphics; plastic tape used for automobile striping (IC 17)
SCOTCHCAL 577,394 Plastic sheet material adapted to be cut into letters, emblems, etc;, for application to signboards, advertising displays and the like [and also suitable for use as a protective covering for ship hulls and as a protective covering for building siding] (IC 1)
SCOTCH 688,141 Liquid adhesive, adhesive sheet material, and adhesive coated sheet material in sheet or strip form (IC 1)
SCOTCH 805,065 Electrical shielding tape (IC 9)
SCOTCH 852,110 Mounting squares having adhesive on both sides thereof (IC 1)
SCOTCH 568,452 Masking paper for use in painting operations to protect an area not to be painted or to be painted a different color (IC 16)
SCOTCH 2,695,951 Full line of adhesive tapes for household or stationery use; adhesive tape dispensers for household or stationery use; bookbinding tapes; paper tapes; food bag and food container marking tape for freezer use; drafting tape for use with paper drawings; hair setting tape for use in styling hair; glue for household use; glue sticks for household or stationery use; and shipping labels. (IC 16)
Full line of adhesive tapes and adhesive tape dispensers for industrial or commercial use; full line of duct tapes; full line of electrical tapes; full line of masking tapes; full line of mounting tapes and adhesive squares for use in affixing signs, posters, pictures, and objects to most surfaces; strapping tapes; carpet seam tape; plastic and metal tapes for making repairs; photographic splicing and repair tape [ ; and reflective tapes for use in the safety and automotive fields (IC 17)
The foregoing SCOTCHCAL and SCOTCH marks are hereinafter jointly referred to as 3M’s “SCOTCH Marks.”
FACTUAL AND LEGAL GROUNDS
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’s business groups include consumer, electronics and energy, health care, industrial, and safety and graphics. 3M offers a wide range of products, including adhesives, abrasives, laminates, passive fire protection, dental products, electronic materials, medical products, car-care products, electronic circuits, optical films, and more. (see also www.3m.com; www.scotchbrand.com.) 3M has global sales of $30 billion, operates in more than 70 countries, sells products in nearly 200 countries, and employs 88,000 employees globally.
3M’s SCOTCH Marks are distinctive, widely recognized trademarks. The SCOTCH brand has long enjoyed strong customer recognition, as documented by its proprietary marks used in connection with the sale of a wide range of products in commerce. Further, 3M has used the SCOTCHCAL trademark extensively in connection with graphic films, including cut graphics on electronically controlled, friction-fed or flatbed cutters. (see also http://www.3m.com/product/information/Scotchcal-ElectroCut-Graphic-Film.html.) 3M’s products are offered worldwide as shown on its website. (see also Id.; www.scotchbrand.com.)
3M has invested substantial sums of money in developing and marketing its products and services under its SCOTCH Marks and has developed substantial goodwill and customer loyalty under said marks. As a result, consumers throughout the world recognize the SCOTCH Marks as an indicator of 3M's products.
The Respondent registered the domain name SCOTCHCAL.INFO with Corehub S.R.L. (“Corehub”), under Corehub’s domain name policy and registration agreement. The Respondent has no statutory or common law trademark rights or any other right or legitimate interest to the SCOTCHCAL mark or in the infringing domain name SCOTCHCAL.INFO.
The Respondent has registered and used the domain name in bad faith. The name is not used for a legitimate reason. Rather, the evidence shows the domain name contains no information other than HTML script that forwards the site to a third party commercial website. The script underlying the website associated with the domain name is below:
<image removed>
The script then forwards consumers to forwards users to http://www.folienhandel.ch/, which is an active third party website offering products that compete directly against 3M and its SCOTCHCAL brand products. The following screen shot is of the website:
<image removed>
The registrant of the domain name at folienhandel.ch, Pinato Graphics AG, is the same as the registrant for the domain name scotchcal.info.
Based on Respondent’s registration and use of the domain name, 3M requested that Respondent cease use of the name and transfer the name to 3M. Respondent failed to respond. Respondent has no legitimate interest in the domain name SCOTCHCAL.INFO. Respondent’s continued trafficking of the domain name without 3M’s permission is bad faith.
a. The Domain Name SCOTCHCAL.INFO is Confusingly Similar to the SCOTCH Marks and is Identical to the SCOTCHCAL Mark.
The Domain Name is confusingly similar to 3M’s SCOTCH Marks pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy ¶4(a)(i). The Domain Name is composed to 3M’s SCOTCHCAL mark with the addition of the .info top level domain. The addition of a top level domain to a mark is also not a distinguishing feature. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that the addition of the suffix .com does not detract from the overall impression of the dominant part of the name). Therefore, SCOTCHCAL.INFO = SCOTCHCAL. Moreover, the domain name is composed of 3M’s SCOTCH marks, which adds to the confusion. The requirement of confusing similarity is met.
b. The Respondent Does Not Have Any Right or Legitimate Interest in the Domain Name SCOTCHCAL.INFO.
Respondent does not have any right or legitimate interest in SCOTCHCAL.INFO. 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 Policy ¶4(c)(i). Moreover, Respondent has no legitimate right to the name in that it has not received permission to use the mark pursuant to Policy ¶4(c)(ii). Furthermore, Respondent is not using the mark for legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) because Respondent uses the site to forward to another site.
1. Respondent has not used the Domain Name in Connection with a Bona Fide Offering of Goods or Services by Forwarding the Domain Name to A 3M Competitor Commercial Site.
A respondent’s use of a domain name to forward consumers to another website not affiliated with the trademark holder is not a bona fide offering of goods or services pursuant to Policy ¶(c)(i). In George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), the panel held that the holding of an inactive website is not a protected use under Policy ¶¶4(c)(i) and 4(c)(iii). There are no legitimate rights gained by passively holding a domain name. Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). Moreover, forwarding users from the inactive domain name to another commercial site is not a legitimate use. See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark was not a bona fide offering of goods or services as contemplated by the Policy).
Respondent does not have a bona fide interest in the domain name pursuant to Policy ¶¶4(c)(i) and 4(c)(iii) in that there is no content on the website associated with the domain name. That inactive use of the domain name shows a lack of bona fide offering of goods or services and a lack of legitimate use. Moreover, Respondent forwards users who seek the domain name SCOTCHCAL.INFO to the website located at folienhandel.ch. Respondent also owns and controls the folienhandel.ch domain name and website, which offers products that compete against 3M products sold in connection with the SCOTCH Marks. Further, Respondent has failed to place any content on the website associated with the domain name other than to inform the user he or she is being forwarded to another address. The domain name is not connected to a bona fide offering of goods or services and is not a legitimate use.
2. Respondent has no Legitimate Right in the Domain Name Because 3M has not Granted Registrant Permission to use the Name.
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 interests 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 name SCOTCHCAL.INFO. 3M has not licensed its SCOTCHCAL trademark or any of the SCOTCH Marks to Respondent. 3M’s prior rights to the trademark SCOTCH date back to at least as early as 1949. Additionally, there is no evidence Respondent is commonly known by the name SCOTCH, SCOTCHCAL or SCOTCHCAL.INFO. The domain name SCOTCHCAL.INFO does not refer to Respondent.
3. Respondent’s Diversion of Traffic to another Website is not a Legitimate Use.
Respondent is also not using the domain name for a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) because the name is commercially used to forward to another site. See RAB Lighting, Inc. v. DNS Support - Ultimate Search, FA0411000363908 (Nat. Arb. Forum Dec. 30, 2004) (holding that opportunistic use of Complainant’s mark to redirect Internet users to a website unrelated to Complainant’s business was not legitimate); Thrifty, Inc. and Thrifty Rent-a-Car System, Inc. v. Airportparkinglots.com, FA0211000129123 (January 2, 2003) (diverting traffic from Complainant is not legitimate and evidence of bad faith); MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
Respondent is not making a legitimate, non-commercial, or fair use of the domain name in that it diverts 3M’s web traffic to a 3M competitor website owned by Respondent. Respondent’s use of SCOTCHCAL in the 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 SCOTCHCAL brand products.
c. The Domain Name Has Been Registered and Used In Bad Faith
Respondent’s
registration of a domain name in association with 3M’s SCOTCHCAL mark shows the
registration was in bad faith. Respondent’s registration of a domain name with
knowledge of 3M’s trademark rights in that name shows bad faith pursuant to
Policy ¶4(b)(ii). Respondent has also acted in bad faith pursuant to Policy ¶4(b)(iii)
because it has failed to make active use of the domain name for an extended
period of time. Respondent’s intentional attempt to attract Internet users to
its website by using a name that is confusingly similar to 3M’s SCOTCHCAL mark
is also in violation of Policy ¶4(b)(iv).
1. Respondent’s Failure to Actively Use the Domain Name Shows Bad Faith.
Respondent’s failure to make active use of the domain name shows bad faith. DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Respondent does not make active use of the domain name SCOTCHCAL.INFO. Rather, Respondent uses the domain name to forward to a competitor’s website owned by Respondent. Further, Respondent’s non-use and extended failure to actively use the domain name by simply forwarding it to another website shows bad faith.
2. Respondent Registered the Domain Name in Bad Faith Knowing of 3M’s Trademark Rights in that Brand.
Respondent’s registration of the domain name SCOTCHCAL.INFO was in bad faith pursuant to Policy ¶4(b)(ii) because at the time the name was registered, Respondent knew of 3M’s rights. “[T]here 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). Regardless of actual knowledge, a respondent should have conducted a trademark search prior to the registration of the domain name. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case D2001-1319 (Feb 1, 2002) (holding the failure to conduct a trademark search considered an element of bad faith).
3M’s
extensive use of the SCOTCH trademark shows that registrant was aware of those
trademark rights. Further, the goods associated with the SCOTCHCAL mark are
the same goods sold by Respondent on its commercial website. It was not a mere
coincidence that Respondent chose to register the domain name scotchcal.com.
Respondent registered the domain name to forward unsuspecting users to its
commercial website in order to compete unfairly against 3M. In addition to the
evidence supporting the actual knowledge, trademark registrations provide
constructive knowledge regarding 3M’s trademark rights in and to the SCOTCHCAL
Marks, and did so prior to Respondents registration of the domain name
SCOTCHCAL.INFO. Therefore, Respondent was on at least constructive notice of
the 3M Marks at the time it registered the SCOTCHCAL.INFO domain name.
Respondent’s continued maintenance of the domain name, particularly after
notice of 3M’s correspondence, as a forwarding mechanism to its websites shows
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 Mark.
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 registered 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 and merely took advantage of Internet user mistakes).
Bad faith is shown because Respondent registered the domain name in order to trade on 3M’s goodwill associated with its SCOTCH Marks, and in particular the SCOTCHCAL mark, by creating a likelihood of confusion as to the source of the website. Respondent uses the domain name to attract consumers who are searching for SCOTCH branded products. Respondent then diverts that traffic to another of Respondent’s websites. That demonstrates Respondent’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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."
Paragraph 4(a) of the Policy requires Complainant prove the following three elements to obtain an order cancelling or transferring a 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.”).
Complainant is an international provider of adhesive products, among other goods and services. Complainant has extensively used the SCOTCH and SCOTCHCAL brand for many years in association with a wide range of goods and services. In particular, Complainant uses SCOTCHCAL in connection with plastic films used in producing graphics, signs and labels. Complainant owns registrations for the SCOTCHCAL mark with the United States Patent & Trademark Office (“USPTO”) (Reg. No. 3,323,604 registered October 30, 2007) and (Reg. No. 577,394 registered July 14, 1953). A registration for a mark with the USPTO (or any other national trademark office) is normally sufficient to establish rights in a mark, regardless of where respondent is located. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Complainant need only prove SOME rights to the mark, not that Complainant’s rights are superior to Respondent’s rights. Complainant has adequately proven its rights in the SCOTCHCAL mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <scotchcal.info> domain name is confusingly similar to Complainant’s SCOTCHCAL mark. Respondent’s <scotchcal.info> domain name features Complainant’s entire mark, and merely adds the gTLD “.info.” It is well established adding a gTLD (or a ccTLD) to a registered mark is irrelevant to a confusingly similar analysis under Policy ¶4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶4(a)(i) analysis.”). Under these circumstances, it seems evident the <scotchcal.info> domain name is confusingly similar to Complainant’s SCOTCHCAL mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
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 has no rights or legitimate interests in the <scotchcal.info> domain name. Respondent is not commonly known by the disputed domain name. Respondent is not licensed by Complainant to use Complainant’s SCOTCHCAL mark in any way. Complainant’s use of the SCOTCHCAL mark predates Respondent’s registration of the disputed domain name. The WHOIS information for Respondent’s <scotchcal.info> domain name lists the registrant as “Mirco Pinato.” There is nothing in the record to suggest Respondent is commonly known by the disputed domain name under Policy ¶4(c)(ii). See, e.g., M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant claims Respondent uses the disputed domain name to redirect internet users to a website not affiliated with Complainant. Respondent forwards Internet users to a website located at <folienhandel.ch>, also owned by Respondent, which offers products which compete with Complainant’s products sold under the SCOTCH marks. Respondent has failed to place any content on the website relating to the domain name, other than to inform the user they are being forwarded to another address. In Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) the panel declined to find that respondent was using the domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the respondent used the domain names solely to divert Internet users to a website offering services that competed with complainant. This Panel would agree with that logic. Forwarding Internet users to a competing website 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 associated with this domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the <scotchcal.info> domain name in bad faith. Respondent is not making an active use of the disputed domain name, and instead, uses the disputed domain name simply to forward Internet users to a competitor’s website owned by Respondent. Respondent’s website purports to sell Complainant’s goods by implication through the disputed domain name, which means it unfairly competes with Complainant by disrupting its business under Policy ¶4(b)(iii).
Complainant claims Respondent uses the confusingly similar <scotchcal.info> domain name to attract Internet users to the resolving website and confuse them as to the source of the resolving website and the products offered. It is bad faith to use a disputed domain name for the purpose of attracting internet users to a website and profiting off of their confusion. 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 and merely took advantage of Internet user mistakes). It appears to this Panel Respondent registered and is using the <scotchcal.info> domain in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent knew about Complainant’s mark when Respondent registered the disputed domain name because Respondent deals with this kind of products. Respondent could not unknowingly stumble into the creation of this confusingly similar domain name. Complainant’s mark is not simply descriptive. This Panel would agree Respondent actually knew of Complainant’s mark before it registered the disputed domain name based upon circumstantial evidence.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <scotchcal.info> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, August 12, 2014
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