3M Company v. Nguyen Hoang Son / Bussiness and Marketing
Claim Number: FA1408001575815
Complainant is 3M Company (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Nguyen Hoang Son / Bussiness and Marketing (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <littmannstethoscopereview.com>, registered with GODADDY.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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 19, 2014; the National Arbitration Forum received payment on August 19, 2014.
On August 19, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <littmannstethoscopereview.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. 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 August 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 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@littmannstethoscopereview.com. Also on August 21, 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 September 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
i. Complainant, 3M Company, has been using the LITTMAN mark in commerce since 1967 in connection with the sale of stethoscopes.
ii. Complainant has a valid registration with the United States Patent and Trademark Office (“USPTO”) for the LITTMAN mark (Reg. No. 751,809, registered June 25, 1963).
iii. The disputed domain name is confusingly similar to the mark in which Complainant has rights.
i. Respondent is not commonly known by the disputed domain name.
ii. Respondent is using the disputed domain name to redirect Internet users from Complainant’s website to his own website, which features Amazon advertisements.
i. Respondent is disrupting the business of Complainant through use of the disputed domain name.
ii. Respondent is using the disputed domain name for commercial gain through reliance on confusion or mistake by diverting potential Complainant customers from Complainant’s site to the disputed domain name and by collecting click-through revenue and sponsored advertisement revenue from the site.
iii. Respondent had actual or constructive knowledge of Complainant’s rights in the mark.
Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 alleges that it has been using the LITTMAN mark in commerce since 1967 in connection with the sale of stethoscopes. Complainant argues that it has a valid registration with the USPTO for the LITTMAN mark (Reg. No. 751,809, registered June 25, 1963). Although Respondent resides in Vietnam, under Policy ¶ 4(a)(i) Complainant need not register its mark in the country where Respondent operates. See 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). The Panel finds that Complainant’s registration of the LITTMAN mark with the USPTO is sufficient to establish its rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the domain name <littmannstethoscopereview.com> is confusingly similar to the LITTMAN mark in which Complainant has rights. Complainant contends that the disputed domain name encompasses the entirety of the LITTMAN mark with the addition of the descriptive term “stethoscope” and the generic word “review”, as well as the addition of the generic top-level domain name (“gTLD”) “.com” and the deletion of the spaces in the mark. The Panel finds that the addition of the descriptive term “stethoscope” and the addition of the generic term “review” does not adequately distinguish the disputed domain name from Complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The deletion of spaces and the addition of a gTLD does not defeat a finding of confusing similarity. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Accordingly, the Panel finds the <littmannstethoscopereview.com> is confusingly similar to the LITTMAN mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant argues that Respondent is not commonly known by the disputed domain name. The registrant of the disputed domain name is listed as “Nguyen Hoang Son”. In Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), the panel found that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute. In this case, the circumstances are similar because the only information available to the panel is that listed in the WHOIS due to Respondent’s default. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name <littmannstethoscopereview.com> pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent is using the disputed domain name to redirect Internet users from Complainant’s website to his own website, which features Amazon advertisements. The landing page of the disputed domain name features generic descriptions of Littman products in the form of reviews, and also advertisements sponsored by Amazon. The Panel finds that Respondent is not using the disputed domain name for 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) as the disputed domain name resolves to a webpage featuring paid advertisements. See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees. . . . is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant has proven this element.
Complainant argues that Respondent is disrupting the business of Complainant through use of the disputed domain name. Complainant claims that Respondent’s attempt to redirect Internet traffic from Complainant’s website to the disputed domain name is disruptive to Complainant’s business as the resolving pages feature stethoscope reviews as well as links to third-party stethoscopes sellers. The Panel finds that Respondent’s use of the disputed domain is evidence that Respondent is using the disputed domain name to redirect Internet users from Complainant’s website to the disputed domain name with the requisite level of competition, and has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).
Complainant argues that Respondent is using the disputed domain name for commercial gain through reliance on confusion or mistake by diverting potential Complainant customers from Complainant’s site to the disputed domain name and by collecting click-through revenue and sponsored advertisement revenue from the site. The disputed domain name leads to a webpage that features reviews of Complainant’s products and also features advertisements sponsored by Amazon. Complainant presumes that Respondent profits from featuring these sponsored advertisements. The Panel finds that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and that Respondent likely profits from the resulting confusion. Accordingly, the Panel finds evidence of bad faith under Policy ¶ 4(b)(iv). See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).
Complainant also contends that in light of the fame and notoriety of Complainant's LITTMAN mark, it is inconceivable that Respondent could have registered the <littmannstethoscopereview.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Respondent further notes that actual knowledge can be inferred as Respondent has used Complainant’s copyrighted content on the resolving page. The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <littmannstethoscopereview.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: September 18, 2014
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